Market Place
Everyone thought the Coexistence Agreement drafted in 1955 (and subsequently revised in 1970) between the two Mercks – Merck Germany and Merck USA – had it all figured out insofar as the two entities were concerned (read Merck vs Merck: A ‘Mercky’ tale).
As per the agreement, US-based Merck & Co. – formed in 1917 after the US government seized Merck & Co. stock owned by German interests – would be called Merck in the US and Canada and MSD, Merck, Sharp Dohme or MSD Merck Sharp Dohme in the rest of the world.
German Merck or Merck KGaA was founded in 1668. The revised Coexistence Agreement of 1970, allowed Merck Germany (E. Merck at the time) to use E. Merck as all or part of the name by which it would identify itself in the United States, “provided such names are geographically identified with Germany as follows: E. Merck, Darmstadt, Germany – all words being given equal prominence.” Since, then German Merck also used the names EMD, EMD Milipore or Emanuel Merck Darmstadt.
The ‘Mercky’ digital world
But in the era of the internet and social media, this rather well-thought out agreement saw instances where the two Mercks accused the other of violating the agreement, leading to a rather ‘Mercky’ battle between the two entities.
It started with the battle for the Facebook page – https://www.facebook.com/merck/. The Facebook page used to be maintained by German Merck KGaA. In 2011, German Merck KGaA found US Merck & Co. squatted on its Facebook page.
As Merck KGaA had an agreement with Facebook, the matter reached the courts and Facebook eventually admitted to its mistake and allowed German Merck to take back the page although KGaA’s Facebook page is now https://www.facebook.com/merckgroup/. US Merck & Co. is at http://www.facebook.com/MerckBeWell.
By 2013, the battle reached the UK courts as the dispute centered around Merck KGaA's claim that MSD’s online use of ‘Merck’ in the UK breached the Coexistence Agreement.
On January 15, 2016, the high court ruled that “uses of Merck as part of MSDs branding on its global websites were directed to the UK and infringed the German group's UK trademark rights.”
Merck & Co. isn’t taking the UK decision lying down. The setback, coupled with a similar decision in France in December 2015, had US Merck file a lawsuit in the US courts that accused Merck Germany of “use of ‘Merck KGaA, Darmstadt, Germany,’ ‘Merck KGaA’ and ‘Merck’ as a prominent feature of its branding in the United States, including use on websites which are specifically targeted to users in the United States as well as on social media sites.”
US Merck has complained to the courts about unauthorized uses of Merck on social media by German Merck. Social Media channels like YouTube, Facebook and Twitter are accessible in the United States. These social media channels feature the use of Merck without the language agreed upon in the Coexistence Agreement.
Battle over the rights of www.merckmanual.porn
‘The Merck Manual’ is considered to be the world’s best-selling medical textbook and the trademark belongs to US Merck.
Amongst the complaints filed in the lawsuit is one related to cybersquatting.
German Merck has registered domain names that are related to ‘The Merck Manual’ and is the owner of the following domain names – www.merckmanual.jobs, www.merckmanuals.jobs, www.merck-manual.jobs, www.merck-manuals.com, www.merckmanual.org, www.merck-manual.adult, www.merck-manual.porn, www.merckmanual.adult, www.merckmanual.porn, www.merck-manuals.adult, www.merckmanuals.porn, www.merckmanuals.adult, and www.merck-manuals.porn.
Users accessing these websites through these domain names receive a message that they will be directed to the Merck Group website.
In the US, which one is the ‘Original Merck’?
In 2013, Stefan Oschmann, the then head of pharmaceuticals for KGaA (and a former long-term employee and executive of Merck Sharp & Dohme), “in a departure” from KGaA’s previous business model, where its pharmaceutical products were offered through ‘alliances’, stated that the US was viewed as an emerging pharmaceutical market for KGaA.
The US launch had been coupled with “a self-promotion campaign on websites directed to the United States dubbing KGaA as the ‘Original Merck’. It featured KGaA’s US employees who also declared their pride in working for the ‘Original Merck’.” In another “Smarter, Together” campaign, KGaA states they have been doing business in the US for over 125 years.
US-based Merck contests this by saying it is them who have done business in the United States for over 125 years, and that in 1945, KGaA lost its subsidiaries abroad; and only in 1971 did KGaA “re-establish” itself in the US market.
Last year, KGaA, on its US targeted website – www.emdgroup.com – discussed its new branding, namely the ‘Merck’ branding, in the United States next to the statement -- “We are Merck.”
Our view
With billions in sales, Merck is an established name in the pharmaceutical industry. While bringing the world closer, digital connectivity has brought about a lot of change through social media. Therefore, in our view, a collision of this kind between the two Mercks was inevitable.
However, it is a shame that the mudslinging has become so shallow but it’s worth asking who at German Merck thought it wise to register these domain name extensions!
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Image Credit : Rebirth by Philip Male is licensed under CC BY 2.0
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