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

This is an inquiry into damages following a protracted dispute between the parties concerning the rights to use the word “Merck” in the UK. The parties, which are both multinational companies in the life sciences and healthcare sectors, have a common heritage and were historically both run by members of the Merck family. I will refer to the claimant as Merck and the defendants collectively as MSD.

The present litigation commenced in 2013, and has been the subject of judgments of the High Court and Court of Appeal as summarised further below. Ultimately, following a trial and further hearing before Norris J, MSDwas found to havebreacheda 1970 agreement between the parties, and infringed Merck’s marks, by the use of the word “Merck” in the UK. On 28 July 2020 Norris J granted various declarations and injunctions, and ordered an inquiry as to damages.

Merck seeks damages on the basis of a reasonable royalty under a notional (fictional) licence negotiated between the parties, permitting MSD to perform acts otherwise prohibited by contract or by Merck’s trade mark rights. On that basis its pleaded claim was for damages of approximately £50.5m. By the start of this hearing that had reduced to £46.1m. That headline figure relied on Merck’s analysis of comparable licences. For the reasons discussed further below, by the closing submissions Merck’s focus was on an alternative economic benefits approach to the licence fee valuation, which it contended indicated a damages figure of around £18.7m.

MSD’s position was that the present case is not appropriate for an award of licence fee damages at all, whether calculated on a comparables approach or an economic benefits approach. In the alternative, MSD contended that Merck’s comparables analysis was fatally flawed, leaving the economic benefits approach as the only meaningful basis for assessment. Calculated on that basis, MSD’s submission was that the appropriate licence fee calculation should be no more than around £2.2m plus interest.

At the hearing, Mr Brandreth KC and Mr Ivison represented Merck; Mr Hobbs KC and Mr Hollingworth represented MSD.Shortly afterthe hearing the parties provided brief further submissions on the issue of the discount rate, in light of the parties’ positions in their closing submissions. On 5 September 2025 the parties provided, at the request of the court, some further calculations on specific figures forming part of the notional licence fee calculation.