Fight over Merck name sees German firm win in British court

FRANKFURT, Jan 15 (Reuters) - Germany's Merck (N:MRK) KGaA MRCG.DE
said it won a British court's backing in its quest to keep U.S.
namesake drugmaker Merck & Co Inc MRK.N from doing business
under the Merck name outside North America, part of an
increasingly bitter legal feud.
Merck KGaA of Germany, maker of multiple sclerosis drug
Rebif and liquid crystals for display screens, and Merck & Co,
which is about 2.5 times as big by sales, share historic roots
but have been under separate ownership since World War One.
The companies struck an agreement in 1955 and amended it in
1970, giving Merck & Co. the rights to the Merck name in the
United States and Canada and handing the rights everywhere else
in the world to Merck KGaA.
Under the deal, Merck & Co agreed to call itself MSD, or
Merck Sharp & Dohme, outside North America, with Merck KGaA
operating as EMD, short for Emanuel Merck, Darmstadt, in North
America.
"In its judgement the English High Court stated that MSD had
breached an agreement with the company by using 'Merck' alone in
the UK either as a trade mark or a name, online or offline," the
German group said in a statement on Friday.
The emergence of the Internet and global electronic media
that can be viewed across continents has exposed gaping holes in
the decades-old agreement.
In the British lawsuit, Germany's Merck objected to Merck &
Co's use of domaine names such as merckresponsibility.com
merckformothers.com in Britain and to Merck & Co's Britain-based
staff using a merck.com email address, among other practices.
A Merck & Co spokeswoman said in an emailed statement the
company disagreed with the ruling: "This decision reflects one
step in a litigation process taking place in a number of
countries, and will be appealed."
She said a French court recently ruled that the U.S. group's
use of Merck in employee email addresses and the title Merck
Manual did not infringe Merck KGaA's rights, whereas certain
uses of Merck on French websites were found to be an
infringement.
Merck & Co, in turn, would fight Merck KGaA in a U.S. court
"regarding their improper use of the name 'Merck' in the United
States," the email continued.
In a sign of defiance and growing frustration over what it
sees as unfair use of the Merck name outside North America, the
family-controlled German group, which traces its roots to a 17th
century pharmacy, has started using the claim "Merck - The
Original".
($1 = 0.9123 euros)