Merck KGaA v Merck Sharp & Dohme LLC & Anor

An application to determine whether admitted or proved conduct breached a court order may be resolved by declaration where no contempt sanction is sought. CPR Part 81 is procedural and not exclusive; its criminal-standard safeguards apply to contempt proceedings, not declaratory proceedings. Internet accessibility alone does not establish use in the UK: targeting is fact-sensitive and requires an overall assessment of the user’s experience, with appellate intervention only for error of principle. UK-specific means specific to the UK, not a multi-country website containing UK-targeted material. An employee-email exemption does not cover generic addresses. Inadvertent error means a genuine accident, not deliberate conduct based on a mistaken interpretation. A declaration may address proved breaches only where no cross-application for declarations of non-breach was made.

Merck Global and Merck US were bound by a 1970 agreement regulating their respective uses of the name and trade mark Merck. Earlier proceedings resulted in findings of breach and infringement, followed by a Final Order restraining specified uses. Merck Global later sought declarations under paragraph 22 of that order and CPR rule 40.20 concerning 55 alleged breaches. Edwin Johnson J found breaches in 17 rows and no breach in 18 rows, giving judgment in [2024] EWHC 820 (Ch).

The defendants appealed on four grounds: whether declaratory relief was permissible without contempt proceedings; whether online uses were targeted at the UK and constituted trade mark use; whether specified exceptions applied; and whether the judge should also have declared that the allegations not proved were not breaches.

Appeal dismissed. The Court of Appeal upheld the declarations concerning the established breaches. Merck Global’s undertaking not to bring contempt proceedings concerning the specific past acts was accepted.

1. Declaratory relief was available as a matter of discretion. The court’s task was sufficiently justiciable because it involved established principles for interpreting court orders and evaluating facts. The relevant question was whether a declaration served a useful purpose, not whether the court lacked jurisdiction. The approach in Nokia Corp v InterDigital Technology Corp [2006] EWHC 802 (Pat) was applicable to positive declarations, and Hotel Cipriani v Fred 250 Ltd [2013] EWHC 70 (Ch) demonstrated the practical utility of declarations concerning compliance with injunctions.

2. CPR Part 81 did not provide an exclusive remedy. It is procedural and concerns proceedings for contempt. Where no contempt sanction is sought, an application under CPR rule 40.20 may determine whether admitted or proved acts breached an order. A later contempt application would retain its procedural safeguards, including proof to the criminal standard.

3. Accessibility of online material was insufficient to establish use in the UK. Targeting was a fact-sensitive evaluation for the first-instance judge, requiring assessment of the relevant websites, webpages, links, media and user journey. The judge made no error of principle in finding targeting in the job advertisements, UK safety data sheets, and links to Merck-branded material, notwithstanding disclaimers and pop-ups. The Supreme Court’s guidance in Lifestyle Equities CV v Amazon UK Services Ltd [2024] UKSC 8 did not require the whole host website to be targeted.

4. For trade mark use, there had to be a link between the sign used as a business or company name and the goods or services marketed. The judge was entitled not to identify particular goods or services separately because it was not disputed that the uses related to goods or services at least similar to those in the relevant specifications.

5. The burden under paragraph 4(h) shifted. Merck Global had to establish the breach; the defendants then had to establish that the conduct was saved by the inadvertent-error exception. Paragraph 4(b) applied only to a website specific to the UK. Paragraph 4(d) concerned email addresses for employees outside the UK and did not extend to generic addresses. Paragraph 4(h) covered genuine accidents, not deliberate acts undertaken on a mistaken interpretation of the order. Its application remained fact-sensitive.

6. The judge was not required to make declarations concerning allegations which had not been proved. The defendants had made no cross-application for declarations of non-breach, and no error of principle was shown in the judge’s exercise of discretion.

1. Court of Appeal (Civil Division): The defendants’ appeal against the order of Edwin Johnson J was dismissed: [2025] EWCA Civ 343.
2. High Court, Chancery Division: Edwin Johnson J declared that uses specified in Schedule 1 breached the Final Order, following judgment in [2024] EWHC 820 (Ch).
3. Earlier proceedings: The dispute had previously resulted in judgments at trial, on appeal, and after remittal, including [2016] EWHC 49 (Pat), [2017] EWCA Civ 1834, [2020] EWHC 1273 (Ch) and [2020] EWHC 2120 (Ch).