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

Fecha: 19-Sep-2025

The 1955 and 1970 Agreements

The 1955 and 1970 Agreements

28.

On 12 September 1955 the companies signed a new agreement (the 1955 Agreement)under which, in broad terms:

E. Merck recognised the exclusive right of Merck & Co to the use of the Merck trade mark in the USA and Canada. In turn Merck & Co agreed that E. Merck could refer to itself as “E. Merck A.G.” or “Emanuel Merck offene Handelsgesellschaft” in the USA and Canada, provided that those names were geographically identified with Germany.

ii)

Merck & Co recognised the exclusive right of E. Merck to the use of the Merck trade mark in Germany. In turn E. Merck agreed that Merck & Co could refer to itself as “Merck & Co” or “Merck Sharp & Dohme”, again provided that those names were geographically identified with the USA or Canada (in the case of Merck & Co) or a country other than Germany (in the case of Merck Sharp & Dohme).

29.

In all other countries, it was agreed that E. Merck was entitled to use the word Merck as a trade mark, and would not object to the use by Merck & Co of Merck Sharp & Dohme as a trade mark or name; nor would it object to the use by Merck & Co of the name of Merck & Co where combined with a geographical designation identifying it with the USA or Canada.

30.

In addition, in relation to countries other than the USA, Canada and Germany, clause 7 of the 1955 Agreement provided:

“In all other countries Merck & Co shall promptly and in any event no later than three years after the effective date of this agreement cancel all existing registrations, withdraw all applications and discontinue all use of the trademarks Merck, Merck Cross and MerckMerckMerck.”

31.

In 1970 a new agreement was signed (the 1970 Agreement) which modified the 1955 Agreement to reflect a change in Merck’s corporate name. The main terms of the agreement remained the same as under the 1955 Agreement. Reflecting clause 7 of the 1955 Agreement, clause 7 of the 1970 Agreement provided:

“In all other countries Merck & Co has undertaken to cancel all existing registrations, withdraw all applications and discontinue all use of the trademarks ‘Merck’, ‘Merck Cross’ and ‘MerckMerckMerck’.”

32.

The 1970 Agreement, together with a protocol agreed in 1975, still governs the relationship between the parties, and formed the basis of Merck’s contractual claim in these proceedings.