More Detail — From The Merck & Co., Inc. V. Merck KGaA Lanham Act Suit, In New Jersey

My good buddie, Ed Silverman (now writing for STAT, in Boston, at the Globe) has a very comprehensive run-down on the US part of these now-reignited battles. Do go read it, all.

In the mean time, I’ll leave a link here, to the full complaint at law, a very large 5.5 MB PDF file, running some 78 pages. I must admit that I think the US Merck has the better of the argument, here. I also think, in time, things will get sorted out in England, as well, largely in US Merck’s favor. [My backgrounder, here.] But here’s a bit:

. . . .Over the years, disagreements have arisen between the parties relating to their respective uses of MERCK on the internet and otherwise in different jurisdictions and the parties have had a continuing dialogue which raised and, in certain instances, addressed such issues. Certain matters were not resolved between the parties and KGaA initiated litigation against Merck and related entities in 2013 in the United Kingdom, Germany and France. . . .

Merck [US] now brings this action based on KGaA’s activities in the U.S. as set forth herein. . . .

One of the issues that has not been resolved between the parties is the extent to which use of “Merck KGaA” would be made in the United States. Until recently, use of the Merck KGaA name has not been specifically directed to the United States and/or has not been used in connection with business activities that are in direct competition with Merck in the United States. . . .

Recently, KGaA has been making ubiquitous use of “Merck KGaA, Darmstadt, Germany,” “Merck KGaA” and “MERCK” as a prominent feature of its branding in the United States, including use on websites which are specifically targeted to users in the United States (despite KGaA claiming that its operating companies in the United States today purportedly operate under the trade name “EMD”) as well as on social media sites that are more broadly accessible, including in the United States. . . .

KGaA has taken a new direction and refocused its efforts on becoming a major player in the U.S. market, including specifically in the immuno oncology field where it directly competes with Merck, a well-recognized leader in that field. . . . In 2013, Stefan Oschmann, then head of pharmaceuticals for KGaA (and a former long term employee and executive of Merck Sharp & Dohme, its predecessors and/or affiliate(s)), stated that the U.S. was viewed as an emerging pharmaceutical market for KGaA and that the company was focusing on investing in its U.S. pharmaceutical business and developing new products to be offered directly by KGaA in the U.S. This was a departure for KGaA, as previously its pharmaceutical products in the United States were offered through “alliances” with other companies. . . .

On information and belief, KGaA has engaged in an intentional, increasing and continuous effort to undermine Merck’s rights and renown in the United States and to establish itself as “THE” Merck or the “ORIGINAL” Merck in the United States. . . . For example, KGaA recently launched a self-promotion campaign on websites directed to the United States dubbing KGaA as the “Original Merck” and featuring KGaA’s U.S. employees declaring their pride in working for the “ORIGINAL” Merck. . . .

As I say, this will all get sorted out, in due course, but using a 1970s-era agreement to address the seamless but complicated nature of the global internet-enabled economy for two very large companies competing in several of the same disease franchises, with very similar names, does not cast a very flattering light — on either of these companies. This is — and more importantly, was — avoidable. Stay warm, one and all!


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