Merck vs. Merck: U.S. Drugmaker Sues German Company Over Naming Rights

Merck & Co. is suing German biotech and chemical giant Merck KGaA in federal court for alleged trademark infringement as part of a larger battle between the two companies over the rights to the Merck name.

The suit, filed Jan. 15 in U.S. District Court for the District of New Jersey, contends that Merck KGaA has been using the name on its web portal for U.S. visitors and on social media. The filing comes against a backdrop of lawsuits filed in Britain, France and Germany by Merck KGaA against Merck for supposedly misusing the name in those countries.

The dispute over rights to the Merck name stems from the companies’ shared past. Merck was set up as an American subsidiary of Merck KGaA in the late 1800s and remained so until World War I. The two have been separate companies ever since.

According to the lawsuit, the two companies signed agreements giving Merck the rights to “Merck” in the U.S. and Canada, while Merck KGaA held those rights in all other countries. Merck KGaA — which does business in the U.S. as the EMD Group — is allowed to use the name “Merck” in the U.S., but only if it includes the company’s location (Darmstadt, Germany) in all such references to avoid confusion. Merck operates under similar requirements in the rest of the world.

Merck’s lawsuit contends that the German company has been making “ubiquitous use” of the Merck name on the EMD Group’s U.S. website and via social media accounts accessible to American consumers. These issues, coupled with the company’s recent interest in marketing pharmaceuticals in the U.S., has become “increasingly disruptive and damaging to Merck’s exclusive rights” to the Merck name in the U.S., in alleged violation of the Lanham Act’s controls on trademark rights and unfair competition, the lawsuit states.

A Merck KGaA spokeswoman tells IPRM that company officials “strongly believe that we have complied with our obligations under the existing agreement.”

A representative of Merck did not respond to a request seeking comment.

Read the district court suit here: — Cameron Ayers


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