Merck KGaA & Ors v Merck Sharpe & Dohme LLC & Anor

• Jurisdiction: Ireland
• Court: Court of Appeal (Ireland)
• Judge: Justice Denis McDonald
• Judgment Date: 24 September 2025
• Neutral Citation: [2025] IECA 192
• Docket Number: Record Number: 2024 287

Between:

Merck KGaA

Merck Serono (Ireland) Limited

Merck Millipore Limited

Sigma-Aldrich Ireland Limited

and

Versum Materials Ireland Limited

Appellants

and

Merck Sharp & Dohme LLC

and

Merck Sharp & Dohme Ireland (Human Health) Limited

Respondents

[2025] IECA 192

Allen J.

O'Moore J.

McDonald J.

Record Number: 2024 287

High Court Record Number: 2023/3882P

THE COURT OF APPEAL

CIVIL

Trade mark infringment – Passing off – Stay – Appellants appealing from a decision staying claims – Whether the proceedings should be stayed

Facts: The appellants appealed to the Court of Appeal from a decision of the High Court (Barrett J): (i) setting aside an order granting leave to serve the first respondent, Merck Sharpe & Dohme LLC, out of the jurisdiction and striking out the proceedings against that respondent; (ii) staying claim of the first appellant, Merck KGaA (Merck Germany), of trade mark infringement against the second respondent, Merck Sharpe & Dohme Ireland (Human Health) Ltd (MSD Ireland), pursuant to Art. 136(1)(b) of Regulation 2017/1001 (the EU Trade Mark Regulation); and (iii) staying the balance of the claims made against MSD Ireland pursuant to the inherent jurisdiction of the High Court. The respondents cross appealed in relation to two issues: (i) an order should have been made by the High Court under Art. 136(1)(a) of the EU Trade Mark Regulation in respect of the claim of trade mark infringement asserted by Merck Germany against MSD Ireland; and (ii) an order should have been made under Art. 29(3) of Regulation 1215/2012 (the Recast Brussels Regulation) declining jurisdiction in respect of the claims of trade mark infringement and/or passing off against MSD Ireland.

Held by McDonald J that he would dismiss the appellants’ appeal against so much of the High Court order as: (a) set aside the order giving leave for the issue and service of the proceedings out of the jurisdiction on the first respondent; and (b) struck out the proceedings against the first respondent. He dismissed the respondents’ cross-appeal against the refusal of its motion for an order pursuant to Art. 136(1)(a) of the EU Trade Mark Regulation declining jurisdiction in respect of the claim of trade mark infringement against MSD Ireland. He allowed the appellants’ appeal against the order made by the High Court pursuant to Art. 136(1)(b) of the EU Trade Mark Regulation staying the claim of trade mark infringement against MSD Ireland and the similar order made under the inherent jurisdiction of the High Court in respect of the balance of the proceedings. He dismissed the respondents’ cross-appeal against the refusal of its motion for an order pursuant to Art. 29 of the Recast Brussels Regulation but allowed the cross-appeal of the respondents against the failure of the High Court to stay the proceedings against MSD Ireland pursuant to Art. 30 of the Recast Brussels Regulation.

McDonald J affirmed so much of the order of the High Court as: (a) set aside the order giving liberty to the appellants to serve notice of the proceedings on the first respondent out of the jurisdiction; and (b) struck out the proceedings against the first respondent. In lieu of the order of the High Court staying the proceedings against MSD Ireland under Art. 136(1)(b) of the EU Trade Mark Regulation and its inherent jurisdiction, he instead ordered that the claim of trade mark infringement and passing off against MSD Ireland be stayed pursuant to Art. 30 of the Recast Brussels Regulation.

Appeal dismissed. Cross appeal allowed in part.

Approved.

No redactions needed.

JUDGMENT of Justice Denis McDonald delivered on 24 ^th September 2025

Introduction

1 . This is an appeal by the plaintiffs/appellants ( “the appellants”) from a decision of the High Court (Barrett J.) (i) setting aside an order granting leave to serve the first named defendant/respondent out of the jurisdiction and striking out the proceedings against that respondent; (ii) staying the first named appellant's claim of trade mark infringement against the second named defendant/respondent pursuant to Art. 136(1)(b) of Regulation 2017/1001 ( “the EU Trade Mark Regulation”); and (iii) staying the balance of the claims made against the second named defendant/respondent pursuant to the inherent jurisdiction of the High Court.

2 . The relevant order of the High Court was made on 6 ^th December 2024 following delivery of a detailed written judgment on 18 ^th October 2024 ( [2024] IEHC 613) on foot of a motion brought by the defendants/respondents ( “the respondents”) dated 14 ^th February 2024. In their motion, the respondents had sought:

• (a) an order pursuant to O. 12, r. 26 setting aside an order made on an ex parte basis on 31 ^st July 2023 giving the appellants leave to serve notice of the plenary summons on the first named respondent outside the jurisdiction on the basis that the claim fell within the ambit of O. 11, r.1(e)(iii) (the claim against that respondent being confined to a claim at the suit of the first named appellant for alleged breach of contract);

• (b) an order striking out the claim against the first named respondent;

• (c) an order pursuant to Art. 136(1)(a) of the EU Trade Mark Regulation declining jurisdiction in respect of the claim made by the first named appellant against the second named respondent in respect of alleged trade mark infringement;

• (d) in the alternative, an order pursuant to Art. 136(1)(b) of the EU Trade Mark Regulation staying the claim of trade mark infringement against the second named respondent;

• (e) an order pursuant to Art. 29 or Art. 30 of Regulation 1215/2012 ( “the Recast Brussels Regulation”) and/ or the inherent jurisdiction of the High Court declining jurisdiction or staying the proceedings, as applicable.

3 . As noted above, the High Court judge granted the relief summarised at paras. 2(a) and 2(b) and he also granted a stay on the trade mark infringement claim under Art. 136(1)(b). In addition, he granted a stay of the balance of the claims made in the proceedings under the inherent jurisdiction of the Court, although both parties have confirmed, during the course of the hearing of the appeal that, while the respondents sought such relief as a catchall in their motion, that relief was not the subject of argument in the High Court. It should be noted that the judgment of the High Court judge does not address the relief described in para. 2(c) above; nor does it address the relief claimed under Art. 29 and/or Art. 30 of the Brussels Recast Regulation.

4 . For the reasons outlined below, I am of the view that the decision of the High Court setting aside service of the proceedings on the first named respondent and striking out the claim against it should be upheld. I am also of the view that the balance of the proceedings should be stayed. However, I believe that the High Court judge was in error in relation to the basis for the grant of the stay. In my view, Art. 30 of the Recast Brussels Regulation is the only basis on which the proceedings should be stayed.

Background

5 . The issues in dispute between the parties to these proceedings form part of a long running and geographically extensive dispute between two groups of companies in relation to the use of trade marks and trade names incorporating the name “Merck”. Both groups trace themselves back to a common ancestor in Germany. At the apex of one group of companies is the first named appellant, Merck KGaA ( “Merck Germany”) which is headquartered in Darmstadt, Germany. It is the parent company of an international science and technology group of companies. The group's core businesses include healthcare, life sciences and electronics. Merck Germany is the registered proprietor of three Irish trade marks namely trade mark numbers 59006, 59007 and 267282 all of which comprise figurative marks embodying the name Merck. It is also the registered proprietor of an EU word mark, Merck, and it is the proprietor of a variety of national trade marks in a number of other jurisdictions around the world.

6 . On the other side of the dispute is the MSD group of companies of which the first respondent, Merck Sharp & Dohme ( “MSD”), is a key member. MSD is headquartered in Rahway, New Jersey. The second named respondent, Merck Sharp & Dohme Ireland (Human Health) Limited ( “MSD Ireland”) is a subsidiary of MSD. The core business of the MSD group of companies is pharmaceuticals. MSD is the successor in title to an entity that was formerly called Merck & Co., Inc. and was later called Merck Sharpe & Dohme Corp ( “MSD Corp”).

7 . The unusual circumstances in which both groups of companies came to use the trade name Merck can be briefly explained. As noted above, both groups of companies have a common origin. According to the statement of claim delivered in the proceedings, the companies on both sides of the dispute have their origin in an apothecary's shop founded by the Merck family in Darmstadt in 1668. That business was, subsequently, carried on under the name E. Merck and, over the years, it grew to become one of the world's largest manufacturers of chemical and pharmaceutical products. In 1889, a member of the Merck family established a trading company called Merck & Co. in the United States in partnership with a third party. That business was subsequently incorporated in 1902 as Merck & Co., Inc. but, during the course of World War I the majority of the shares in that company were appropriated by the United States Government as enemy property. They were later re-acquired by George Merck after the war had ended. From that point, E. Merck, (now Merck Germany) and Merck & Co., Inc. were separate independent businesses whose operations were distinct from each other.

8 . As the business of the companies grew, there was an obvious risk of confusion between them. This was recognised on both sides and, for that reason, an informal arrangement evolved...