Merck KGaA v Merck Sharp & Dohme LLC & ors [2025] EWHC 2376 (Ch)
This was the damages inquiry in a longstanding dispute between two global pharmaceutical businesses. Although both use the name “Merck” to refer to their businesses, products, and services, it is only the Claimant which has the right to do so in the United Kingdom (whereas the Defendants may use “MSD”, or “Merck Sharp & Dohme” plus a geographical identifier). The Defendants had been found, in earlier judgments in the litigation, to have infringed the Claimant’s registered trade marks and breached an agreement dating from the 1950s by using the name “Merck” including on websites (such as merck.com) which were targeted at consumers in the United Kingdom.
The Claimant claimed damages assessed on the basis of a notional licence fee: i.e. what reasonable parties in the position of the Claimant and Defendants respectively would have agreed as the price for permitting the Defendant to carry out the acts found to have been infringements of registered trade mark and breaches of contract. The damages inquiry addressed the availability of licence fee damages in breach of contract and trade mark cases, the utility of certain agreements relied upon by the Claimant as comparables, and an economic benefits approach to quantification of benefits obtained by the Defendants through their acts of infringement and breach.
Bacon J rejected the Defendants’ argument that the Claimant had not established an entitlement to any award of licence fee damages, finding (adopting an economic benefits approach, but rejecting the Claimant’s comparables-based approach) a total of c. £6m (inclusive of interest) to be due to the Claimant.
Benet Brandreth KC and David Ivison appeared on behalf of the Claimant, Merck KGaA.