HC-2013-000089 - [2025] EWHC 2376 (Ch)

Mr Hobbs in his closing submissions pursued (albeit somewhat faintly) a submission that Merck had not pleaded a claim to damages based on an economic benefits approach, as an alternative to its reliance on a comparables analysis. This was a rather surprising submission, given that both experts considered at some length the assessment of damages based on an economic benefits approach, as an alternative to a comparables analysis; both experts agreed that in principle an economic benefits approach was a legitimate approach to adopt; and extensive submissions were made on the economic benefits analysis on both sides during both opening and closing submissions.

In any event, I do not accept the pleading point. Merck’s Amended Points of Claim expressly stated that Merck relied on the benefits obtained and costs avoided by MSD by the acts held to be breaches of contract and infringements of Merck’s trade marks. The avoided costs were particularised to include matters such as the costs of migrating employee email addresses from @merck.com to @msd.com, and the costs of geo-targeting of the infringing websites and developing and maintaining mirrored websites which did not use the sign Merck in an infringing way. While Merck’s pleaded quantum of loss was based on a percentage royalty approach, §26 of the Amended Points of Claim stated that:

“The calculation of the precise figures claimed is dependent on information in the control of the Defendants, such as UK revenues in the relevant periods, any comparable licence figures for use of the sign MERCK by the Defendants, and accrued benefits and costs avoided by the steps taken by the Defendants. Following full disclosure and evidence, including of the Defendants’ UK revenues in the relevant periods and comparable licence royalty rates paid by the Defendants, the Claimant will provide a further calculation and reserves the right to adjust the licence figure and sum claimed as a result.”

In those circumstances the suggestion that an economic benefits approach to the calculation of the notional licence fee was not available to Merck on its pleaded case is hopeless.