MERCK KGaA v MERCK SHARP & DOHME CORP.

In complex, continuing proceedings concerning the scope of an earlier court order, the court may require evidence to be served within a reasonable timetable reflecting the work already undertaken and the complexity of the issues. A dispute’s limited geographical scope does not make mediation inappropriate, particularly where the dispute forms part of wider litigation. The court may direct parties to explain why mediation has not occurred and may take those explanations into account on costs, without compelling mediation or requiring waiver of privilege. Trial estimates should remain proportionate and may be reviewed as the evidence develops.

The claimant applied for directions concerning ongoing acts by the defendants and whether those acts fell within the boundary established by an order made by Sir Alastair Norris on 28 July 2020. The application was treated as one for declaratory and case-management relief, rather than punishment for past contempt.

The principal issues were the timetable for evidence, whether the parties should undertake neutral evaluation or mediation, and the appropriate trial estimate and listing. The dispute involved 55 alleged incidents, possible patterns of behaviour, and whether the defendants’ acts targeted the United Kingdom in the sense relevant to trade mark law.

1. Nature of application. The application concerned the future boundary of the earlier order and was not to be treated as an application to punish past contempt.
2. Evidence timetable. The 55 incidents could not sensibly be reduced to sample cases because the claimant relied on an emerging pattern and the question whether the defendants targeted the United Kingdom required consideration of the incidents in context. The dispute also required examination of matters including the pattern of acts, steps taken to ensure compliance, and technical measures available and used. The defendants’ evidence was therefore directed to be served by approximately the end of July, with liberty to seek an extension supported by a fuller explanation of work completed and outstanding.
3. Mediation. The court rejected the claimant’s reasons for excluding mediation. Mediation may succeed where without-prejudice negotiations have failed, and the limited geographical scope of the proceedings did not prevent a resolution. The court did not order mediation, but directed each party to explain in writing in September why mediation had not occurred and, if it considered mediation unsuitable, why. The explanations would not require waiver of privilege but could be considered at the end of the litigation in relation to costs.
4. Trial estimate. The court provisionally estimated one day of pre-reading and two days in court. The trial was not to be listed before the beginning of 2023. The estimate was expressly subject to review in light of the evidence and active case management.