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

For the purposes of the issues for determination in this trial, it is not necessary to set out a comprehensive summary of the findings of Norris J in his trial judgment (to the extent upheld by the Court of Appeal) and the remitted matters judgment, as to the acts which were infringements of Merck’s trade mark rights and/or breaches of contract. Rather, it is sufficient to give a flavour of those findings.

First, it was not alleged that MSD had ever used the word Merck on the packaging of any goods sold or offered for sale in the UK. But Norris J did find there to be “direct use” of the Merck mark in the sense that some of Merck’s webpages, accessible in the UK, used the word Merck in a way which he found was use in a trade mark sense to designate Merck as the originator of MSD’s pharmaceutical products, and was therefore a trade mark infringement (as well as a breach of contract).

These included (for example) a www.merck.com webpage promoting oncology drugs, bearing the logo “MERCK Be well”, referencing further information regarding “Merck oncology clinical trials” and “Merck’s investigational medicines access policy”, and explaining that the trade marks on the website were “owned, licensed to, promoted or distributed by Merck”. Norris J found that the references to Merck reinforced the link between the products and the sign MERCK: remitted matters judgment §§41–42.

Similarly, in relation to MSD’s services, another page on the www.merck.com website promoted the role of “Merck Clinical Trials” in developing new drugs, identifying enrolling locations in the UK for clinical trials. That page likewise included a Merck logo and made repeated references to “Merck”. Norris J held that the Merck sign was being used in relation to goods and services in the course of trade, because the “whole object of the page is to promote confidence in the products currently associated with the Merck US sign … these pages are part of a suite of sites, one function of which is to associate in the mind of the reasonable consumer (i) goods sold and services provided by MSD in the UK with (ii) the ‘MERCK’ sign”: remitted matters judgment §43.

Norris J also considered various examples of webpages referring to the online version of the Merck Manuals, the originator of which was, he noted, a business using the sign Merck. Although the Merck Manuals are a not for profit service, he found that they were used in the course of commercial activity promoting products that were sold by MSD in the UK (and referred to elsewhere in the Merck suite of websites), such that the sign Merck was used in relation to goods or services in the UK: remitted matters judgment §§55 and 57.

Further examples included pages from the www.merck-animal-health.com website with references to Merck Animal Health as well as the Merck Manual for Pet Health. Norris J found that the object and effect of the pages was to associate the products and services mentioned with the Merck sign and thereby to promote the business of the MSD Animal Health business unit: remitted matters judgment §68.

In addition to the use of the Merck sign on websites, Norris J found that users of the www.msd-uk.com website were frequently directed to @merck.com email addresses. That was a trade mark infringement as well as a breach of contract: trial judgment §§116, 124, 134; remitted matters judgment §§84–86. Norris J also considered that specific emails sent in response to an enquiry from a doctor about a particular MSD product were infringing use, on the basis that the emails referred to the product as a Merck product. That was found to be direct dealing with a consumer in the marketplace, using the Merck mark: remitted matters judgment §82.

It was common ground that all of the conduct found to amount to a trade mark infringement was also a breach of contract. Some of the conduct objected to by Merck was, however, only found to be a breach of contract and not a trade mark infringement. An example of that was a set of YouTube pages linking to videos about various medical conditions, with the videos described as being “by Merck”, with the Merck US logo displayed. Norris J considered that these were “at one remove from product promotion”: remitted matters judgment §76. Merck had also objected to a small number of offline uses of the Merck sign, including presentations at conferences and press releases. These were breaches of contract but were not found to be trade mark infringements: remitted matters judgment §§78–81.

As to MSD’s overarching approach, Norris J commented that: