- Responding to trademark infringement allegations by the U.S.-based Merck & Co., the German Merck KGaA last week filed a response in the U.S. District Court of New Jersey and reiterated its intention to defend itself. Both companies accuse each other of improperly using the trademarked name "Merck."
- U.S.-based Merck, known as Merck Sharp & Dohme Corp outside the U.S., sued the German company in January for violating the two coexistence agreements the companies signed in 1955 and 1970. Merck KGaA goes by EMD Group when it does business in the U.S.
- However, in a digital age, keeping the distinction between the two brands has become more difficult, especially when the reach of branded social media can easily cross borders. An English court previously ruled the U.S. Merck had improperly. used the brand "Merck" independently on some web sites and social media targeted for the U.K, according to the New Jersey Law Journal.
Despite the shared main name, Merck & Co. and Merck KGaA operate as two separate companies, with distinct identities, branding, and portfolios.
Merck KGaA has accused Merck & Co. of "indiscriminately" using the Merck trademark outside of its US and Canadian territories, according to Fierce Pharma. Furthermore, the German company claims Merck & Co. of initiating its suit in order to cover up practices which infringe on the trademark agreement.
"We are committed to protecting our brand and reputation, and to complying with our existing agreement with MSD and MSD’s trademark rights in the United States,” said Friederike Rotsch, general counsel at Merck KGaA.
The U.S. Merck has taken issue with rebranding efforts recently unveiled by Merck KGaA, complaining of the German company's use of "the Original" related to the "Merck" name. But, in this seemingly see-saw brand battle, Merck KGaA says the U.S. company is challenging a branding practice first used in 1995.
Some background: Merck KGaA dates back to a company founded in 1668. Merck & Co. was set up as a U.S. subsidiary in 1891. That subsidiary was then expropriated during World War I, establishing it as an independent company.
While the trademark spat may seem silly, the tremendous recognition associated with the "Merck" name gives this case important marketing implications. Digital advertising only raises the stakes by broadening reach and consumer association.