Merck KGaA v Merck Sharp & Dohme LLC & Ors

As I work through the Rows, I will be making repeated references to the witness statements and their exhibits. I will refer to each witness statement using the surname of the person making the witness statement and the number of the witness statement. Exhibits are identified by reference to their title. Using an example relevant to all of the Rows, Day 2 is the second witness statement of Mark Day, a solicitor acting for the Claimant, dated 3^rd March 2022. MCJD-3 is the first exhibit to that witness statement. No discourtesy to any witness is intended by these abbreviated forms of reference.

References to “MSD” mean the name and branding which the Defendants are permitted to use (as opposed to Merck) outside the US and the other Permitted Territories, as defined in paragraph 24 of the Order (Canada, Cuba and the Philippines).

Where I refer to an alleged breach of Paragraph 2, this necessarily means an alleged breach by the First Defendant. In the case of an alleged breach of Paragraph 3, I will identify the relevant MSD Defendants alleged to have breached Paragraph 3. My references to Sub-paragraph (h) and, in particular, to inadvertent errors are references to Sub-paragraph (h) and inadvertent errors as I have construed the same.

The Claimant made much of the point, in submissions, that the MSD Defendants could not feasibly deny that a particular activity was a breach of the Order, and then rely on Sub-paragraph (h) to contend that the relevant activity was an inadvertent error. It is convenient to deal with this submission before coming to the individual Rows. I do not accept this submission, as a general proposition. In the case of an alleged breach of the Order, it seems to me that there is nothing, in principle or logic, to prevent the MSD Defendants from seeking to rely upon Sub-paragraph (h) as a fallback and alternative argument to the argument that, independent of Sub-paragraph (h), there was no breach. The question of whether Sub-paragraph (h) can be relied upon depends upon whether there was an inadvertent error, which in turn depends upon the evidence concerning the action or omission said to have given rise to the alleged breach. I see no reason why the MSD Defendants cannot argue that, on the evidence, the relevant action or omission constituted an inadvertent error, while also saying, for separate reasons, that the relevant action or omission did not in fact give rise to a breach of the Order. It may be, in the case of a particular alleged breach, that there are particular difficulties in running these arguments side by side, but that depends upon the nature and circumstances of the relevant alleged breach. In principle I see no reason why the arguments cannot be run side by side. Accordingly, and unless I indicate otherwise in relation to my discussion of any particular Row, I have not accepted the argument that there is a difficulty in relying upon Sub-paragraph (h) as a fallback argument to the argument that, independent of Sub-paragraph (h), there was no breach.

It will be recalled that Sub-paragraph (h) does contain a time limit for correcting an inadvertent error, where an inadvertent error, within the meaning of Sub-paragraph (h), can be shown to have occurred. In his closing oral submissions in reply, I understood Mr Speck to accept that in those cases where the MSD Defendants contended that there was an inadvertent error, within the meaning of Sub-paragraph (h), which they then corrected promptly within the time limit, the Claimant was not contending that the correction occurred outside the time limit. I should record that Mr Speck was careful to hedge this around with the qualification that this all depended upon whether the situation was, in reality, one where an inadvertent error had occurred which the Defendants then took steps to correct. Mr Speck’s definition of when this would occur was a narrow one. I mention this acceptance under the heading of preliminary matters because it avoids the need to deal with the 7 day time limit, if and to the extent that I find that inadvertent errors occurred which were the subject of prompt corrective action. In any such case I accept, and find that the corrective action was taken within the 7 day time limit.

The evidence in this case, as I have noted, is voluminous. In my analysis of each Row, I will not attempt to make comprehensive reference to all the evidence to which my attention has been drawn, in the written and oral submissions, in relation to that Row. It has all been taken into account. Where I make specific reference to the evidence in this judgment I am, unless otherwise stated, accepting that evidence so far as it is confined to statements of fact. In this context it is also convenient to mention (not, I stress, by way of criticism) that the Claimant put a number of written questions to various of the MSD Defendants’ witnesses, on their witness statements. The questions were put by a series of Part 18 Requests contained in a document dated 3^rd October 2022. The relevant witnesses made further witness statements in answer to the questions posed by these requests (“the Part 18 Requests”). The result of this, which is relevant to my consideration of the evidence in the witness statements, is that I have the benefit of further elaboration of much of the original evidence given by the relevant witnesses for the MSD Defendants.

In the case of five of the Rows, the Claimant’s case is that Paragraph 3 was breached by the Second Defendant, in addition to the First Defendant. In the case of two of the Rows the Claimant’s case is that Paragraph 3 was breached by the Fifth Defendant, in addition to the First Defendant. In the case of one of the Rows, the Claimant’s case is that Paragraph 3 was breached by the Second Defendant only.

The basis on which the relevant MSD Defendant or MSD Defendants are said to have been responsible for the material which is relied upon in each of the Rows is particularised in the fifth column of an Amended Annex to the Claimant’s Points of Reply. The evidence in support of these particulars can be found in Day 2 and the exhibits thereto. Day 2 is a lengthy witness statement. In summary, what Mr Day does in Day 2 is to work through each Row, identifying the evidence relied upon by the Claimant and the relevant exhibit which contains the documentary evidence relied upon. In the case of each Row Mr Day sets out the results of the research carried out by the Claimant’s solicitors to identify the person or persons responsible for the material said to breach Paragraph 2 and, where this is alleged, Paragraph 3. This evidence is supplemented by a witness statement of Christopher Bourchier, a trainee solicitor with the Claimant’s solicitors.

By way of example of the evidence relied upon, I refer to the evidence of Mr Day and Mr Bourchier in support of the claims of breach of Paragraph 2, by the First Defendant, and breach of Paragraph 3, by the First and Second Defendants, in relation to Row D. Row D is concerned with uses of Merck on the website merckoncologyclinicaltrials.com.

At paragraphs 3 and 4 of Bourchier 1, Mr Bourchier says this:

At paragraph 27 of Day 2, Mr Day says this:

On this basis, as I understand the Claimant’s case, both the First and Second Defendants are said to be responsible for the material which is the subject of the complaints in Row D. Evidence of a similar kind is relied upon in relation to the other Rows, further to the particulars in the fifth column of the Amended Annex to the Claimant’s Points of Reply. Those particulars, so far as they comprise matters of fact, are admitted; see the letter from the solicitors for the MSD Defendants, dated 15^th November 2023.

The case of the MSD Defendants, as I understand it, is that the material relied upon by the Claimant in this context is not sufficient to establish use of the relevant material by the relevant MSD Defendant of the kind required to engage Paragraph 2 or Paragraph 3. In this context I have been referred to the evidence of Johanna Herrmann, Head of Corporate Communications at the First Defendant, in Herrmann 1. At paragraphs 6 and 7 of Herrmann 1, Ms Herrmann explains the roles of the MSD Defendants in the following terms:

So far as copyright notices are concerned, Ms Herrmann says as follows, in paragraph 45 of Herrmann 1:

The letter from the solicitors for the MSD Defendants, which I have mentioned above and which is dated 15^th November 2023, says the following in relation to paragraphs 6 and 7 of Herrmann 1:

I take the above statement to mean that the material complained of in the Rows comprises part of the commercial activities of the First Defendant, with the consequence that the First Defendant can be held to have breached Paragraphs 2 and 3, by reason of the use of this material, assuming (of course) that the use of the material constituted a breach of Paragraph 2 and/or Paragraph 3. I also take the above statement to be made subject to arguments which the MSD Defendants raise as to responsibility for particular material; see, by way of example, the argument of the MSD Defendants, in relation to Rows AA and GG, that the relevant material was supplied by third parties. Whether or not I have understood the above statement correctly, and subject to arguments about particular Rows, I am satisfied, on the evidence, that the First Defendant can be held responsible for the material complained of in the Rows, with the consequence that the First Defendant can be held to have breached Paragraph 2 and/or Paragraph 3, assuming that the use of the relevant material constituted a breach of Paragraph 2 and/or Paragraph 3. Where there are particular arguments about particular Rows, I shall consider those arguments in my analysis of the relevant Rows.

This leaves the Second and Fifth Defendants. In general terms I am not persuaded, on the evidence, that the Second Defendant or the Fifth Defendant can disclaim responsibility for the material for which, by reference to the researches and evidence of the Claimant’s solicitors, they appear to have responsibility. In my view the evidence adduced by the Claimant does establish this responsibility, with the consequence that the Second and Fifth Defendants are in the same position as the First Defendant in this respect. Where allegations of breach of Paragraph 3 are made against the Second Defendant or the Fifth Defendant, the Second Defendant or the Fifth Defendant, as the case may be, can be held responsible for the material complained of in the relevant Rows, with the consequence that the Second Defendant or the Fifth Defendant, as the case may be, can be held to have breached Paragraph 3, assuming that the use of the relevant material constituted a breach of Paragraph 3. Where there are particular arguments about particular Rows, I shall consider those arguments in my analysis of the relevant Rows.

It follows from the above conclusions that, in working through the Rows and subject to particular arguments such as that relating to material provided by third parties, I approach each Row on the basis that the relevant MSD Defendant can be held responsible for the material complained of and can, by the use of such material, be held to have breached Paragraph 2 and/or Paragraph 3, if the use of the relevant material constituted a breach of Paragraph 2 and/or Paragraph 3. In order to avoid unnecessary repetition, what I say in this paragraph should be taken as incorporated into my analysis of each Row.

The Amended Annex to the Claimant’s Points of Reply identifies, in the sixth column, the goods and/or services in each of the Claimant’s trade mark registrations which are relied upon in relation to the alleged use of Merck by the relevant MSD Defendant or MSD Defendants. So, and by way of example, the complaints in Row A relate to the use of Merck on the merckcovidresearch.com website. In the sixth column of the Amended Annex, the following statement appears:

There then follows a specification of the classes within the four registered marks which are said to be engaged.

The same process is then repeated under the following statement:

The same format, with variations, is then used for each succeeding Row.

In the course of their oral submissions both Mr Hobbs and Mr Hollingworth reminded me that, in order to establish infringement of trade mark, the Claimant had to demonstrate, in relation to each Row where breach of Paragraph 3 is alleged, that Merck was used in the course of trade in the UK in relation to at least some of the goods and services listed in the sixth column of the Amended Annex for that particular Row. Mr Hollingworth went on to make the specific point that if one looked at the Rows where the complaint related to the use of an @merck.com email address, such use of an email address could not possibly be regarded as use in the course of trade in the UK in relation to any, let alone all of the long list of goods and services identified in the sixth column of the Amended Annex.

I accept the general point made by Mr Hobbs and Mr Hollingworth in this context, in terms of what has to be demonstrated as an element of the tort of infringement of a trade mark. I do not accept that this general point raises a material issue, in terms of what I have to decide in relation to Paragraph 3. I say this for two reasons.

First, in his oral submissions in reply Mr Speck asserted that there had never been any dispute in the Application that if the MSD Defendants were using Merck as a trade mark in the course of trade in the UK, they were using it in relation to goods and services which were, at least, similar to those of Merck Global. So far as I can see, that assertion was correct. In any event, I note that the classes of goods and services listed in the sixth column of the Amended Annex are extensive. It is not apparent to me, in relation to any of the Rows, that if Merck was being used as a trade mark by Merck US in the course of trade in the UK it was not being used in relation to goods and services which were at least similar to this listed in the sixth column for that Row. In my view a case of this kind has not been established by the MSD Defendants for any of the Rows.

Second, and by reference to Mr Hollingworth’s example of the use of @merck.com email addresses, it seemed to me that there was a confusion here. I can see that there are various issues to be resolved in relation to the question of whether the use of the relevant email addresses constituted a breach of Paragraph 3, including the question of whether this constituted use of Merck as a trade mark.  If however it is assumed that the use of these email addresses did constitute use of Merck as a trade mark in the course of trade in the UK, this necessarily assumes that these email addresses were being used to promote some goods or services of Merck US. If this is assumed to have been happening, I have some difficulty in seeing how these goods and services could not possibly be at least similar to the goods and services of Merck Global which are specified in the sixth column of the Amended Annex for the relevant Rows.

In my analysis of the Rows therefore, I proceed on the basis that identity of at least some goods and services or at least similarity of at least some goods and services is established, to the requisite standard, by the information in the sixth column of the Amended Annex.

I have based my general methodology upon a very useful table, provided by the MSD Defendants’ counsel, by way of an annex to their skeleton argument for the hearing of the Application.

This table (“the Table”) sets out the matters raised by way of defence to the allegations of breach of the Order in Annex 2, using the same numbered Rows. The Table is extremely helpful as a quick guide to the case of the MSD Defendants in response to the allegations of breach in each Row. For present purposes, there are two particular features of the table to which I should draw attention. First, the Table shows by columns, in relation to each Row, whether any of the relevant Sub-paragraphs, namely Sub-paragraphs (b), (d) and (h) are relied upon. Second, the Table has columns for Paragraph 2 and Paragraph 3. In the case of Paragraph 2 the column shows, for each Row, whether it is contended that there was no breach of Paragraph 2, on the basis that there was no use of Merck within the UK for the purposes of Paragraph 2. In the case of Paragraph 3 the column shows, for each Row, whether it is contended that there was no use of Merck as a trade mark in the course of trade in the UK for the purposes of Paragraph 3.

My understanding of the columns for Paragraphs 2 and 3 in the Table is that they show whether there is a dispute to be resolved, in relation to each Row, before one gets to any of the Sub-paragraphs which are relied upon. I have found it helpful to adopt the same methodology in my analysis of the allegations of breach of the Order in each Row, subject to this qualification. I have noted earlier in this judgment that there is a difference between Sub-paragraphs (a) to (g) and Sub-paragraph (h). Sub-paragraphs (a) to (g) serve to define certain activities which are not a breach of Paragraph 2 or Paragraph 3. Sub-paragraph (h), where it applies, has the effect that an activity which would otherwise constitute a breach of Paragraph 2 and/or Paragraph 3 is prevented from being a breach.

With the above qualification in mind my approach, in relation to each Row, is as follows:

Finally, and for the sake of good order, I should repeat the point made earlier in this judgment that, in considering whether Paragraph 2 has been breached, I do not distinguish between the two limbs of the contractual prohibition in Paragraph 2; that is to say use of the trade mark Merck and use of the word Merck as a contraction of the First Defendant’s corporate name or as a trade or business name. As I have explained, this approach reflects the absence of such distinction in the submissions of the parties.

It is convenient to start with Row F, as it links to other Rows. The complaint in Row F concerns what is referred to as the MSD Website. The MSD Website is a reference to www.msd.com, which I shall refer to as “the MSD Website”. There are two complaints, which are explained in Day 2, at paragraphs 33-40. The relevant screenshots exhibited to Day 2 were taken on 4^th October 2021.

Mr Day’s evidence is that the relevant screenshots were taken, and the relevant website pages were accessed by the relevant member of his firm using a computer in the UK. In order to avoid unnecessary repetition of this point, the same applies to the accessing of online materials and screenshots of the same for each of the Rows spoken to by Mr Day in his evidence in Day 2. On each occasion, unless otherwise indicated, the evidence is that a computer in the UK was used.

Returning specifically to Row F, the first complaint is that Merck is used in the first line of the First Company Statement. The First Company Statement is a reference to a company statement dated 1^st October 2021 which was published by the First Defendant on the MSD Website, entitled “MSD and Ridgeback’s Investigational Oral Antiviral Molnupiravir Reduced the Risk of Hospitalization or Death by Approximately 50 Percent Compared to Placebo for Patients with Mild or Moderate COVID-19 in Positive Interim Analysis of Phase 3 Study”. The First Company Statement contained the following use of Merck in its first line:

The second complaint is that this company statement (“the First Company Statement”) directed readers who required more information to visit, by a link, a website with Merck in the domain name. The domain name of the website was http://merckcovidresearch.com (“the Merck Covid Research Website”).

The first of these complaints is said to constitute a breach of Paragraph 2. The second of these complaints is said to constitute a breach of Paragraph 2 and a breach of Paragraph 3 by the First and Second Defendants.

The Paragraph 2 column in the Table shows no dispute for this Row. The MSD Defendants deny that there was a breach of Paragraph 3, on the basis that there was no use of Merck as a trade mark in course of trade in the UK for the purposes of Paragraph 3. In the case of the alleged breaches of Paragraph 2 and the alleged breach of Paragraph 3, the MSD Defendants rely upon Sub-paragraph (h).

In relation to the first of these complaints, the MSD Defendants say that the opening line of the First Company Statement was correct. The company with the listing MRK on the New York Stock Exchange is known as Merck in the US and Canada.

Turning to the second complaint, the evidence in response to this complaint is given by Susanna Kantor, Associate Director of Global Trial Optimization for the First Defendant. Ms Kantor explains, in Kantor 1, that two Covid research websites were developed to provide information to relatives of hospitalised patients who consented to take part in the MK4482 investigational antiviral drug trial. The drug was given the generic name molnupravir. The websites were created so that staff could refer family members, who would not be with their relatives, to information about the study. The study was international, so the two research websites were created. The Merck Covid Research Website was intended for residents of the US. The MSD Covid research website (“the MSD Covid Research Website”) was intended for people outside the US. Ms Kantor says that she knew that Merck US should not use Merck outside the US, so the decision was made to have an MSD URL, with content on that page for people outside the US. The content on both of the Covid research websites was the same, save that the content of the Merck Covid Research Website referred to MSD when it was used on the MSD Covid Research Website, as well as there being changes to specific links and logos.

The evidence of Ms Kantor, as to how the link to the Merck Covid Research Website found its way into the First Company Statement on the MSD Website includes the following, at paragraph 18 of Kantor 1:

Further evidence in response to the complaints in Row F is given by Sienna Choi, Director in Global Communications of the First Defendant. Ms Choi gives the following evidence, in paragraphs 15 and 16 of Choi 1:

As I have said, the Paragraph 2 column of the Table shows no dispute for this Row. As I have also explained however, I do not regard this position as entitling me to proceed straight to Sub-paragraph (h). I start by considering the question of whether the two matters complained of did each constitute a breach of Paragraph 2. As to that I am satisfied, on the evidence and applying the relevant principles of law, that the two matters complained of did each constitute a breach of Paragraph 2, if Sub-paragraph (h) is put to one side. In the case of Row F, I will briefly set out my reasons for this conclusion. In relation to the allegations of breach of Paragraph 2 in the remaining Rows, but only in those cases where the column in the Table for Paragraph 2 shows no dispute and there is no reliance upon Sub-paragraph (b) and/or (d), I will confine myself to a statement (if appropriate) that I am satisfied, on the evidence and applying the relevant principles of law, that breach of Paragraph 2 has been demonstrated, if Sub-paragraph (h) is put to one side. In the case of Row F I am setting out a brief statement of my reasons because they effectively apply to all Rows where the position is the same in relation to the allegation of breach of Paragraph 2, namely no dispute shown in the Paragraph 2 column of the Table, no reliance upon Sub-paragraph (b) and/or (d), but reliance upon Sub-paragraph (h).

Starting with the first complaint and with Paragraph 2, Merck appeared in the first line of the First Company Statement. It seems to me that this was clearly the use of Merck both as a trade mark and as a corporate, trade or business name. The use was clearly within the UK, given that the MSD Website was plainly targeted at the UK, amongst other countries. Equally, it seems clear to me that Merck was being used in the furthering or promoting of the business of the First Defendant in the UK. This was clearly the purpose of the MSD Website and its content.

I do not think that it is any defence to say, as the MSD Defendants have, that the statement was accurate. Sub-paragraph (a) provides that the designation “Merck & Co Inc” can be used in the UK, accompanied by a geographical identifier which substantially complies with the requirements of the 1970 Agreement. The relevant clause of the 1970 Agreement is clause 5, which I repeat for ease of reference:

This clause is narrow. What is required is geographical identification with the US. In my view the opening line of the First Company Statement did not achieve this, however accurate it may have been on its own terms. It seems to me therefore that Sub-paragraph (a) would not apply, and I note, in any event, that it is not relied upon. In the absence of Sub-paragraph (a) I cannot see anything else which prevented the first line of the Company Statement breaching the restrictions in Paragraph 2, assuming that Sub-paragraph (h) is not available.

Turning to the second complaint, and again dealing with Paragraph 2, the same reasoning seems to me to apply as in the case of the first complaint, save that the point about geographical definition does not arise.

Turning to Paragraph 3, and again putting Sub-paragraph (h) to one side, I am concerned only with second complaint within Row F. The case of the MSD Defendants is that there was no breach of Paragraph 3 by the First Defendant or the Second Defendant. I cannot accept this case. The link to the Merck Covid Research Website was available on the MSD Website. The MSD Website was, as I have said, clearly targeted at the UK. It seems to me that the link to the Merck branded website was provided for the purposes of promoting the goods and services of Merck US. It also seems to me that the use of Merck in the website address given for the link was trade mark use, associating Merck with the promotion of the goods and services of Merck US effected by the Merck Covid Research Website. By virtue of the targeting of the MSD Website this was trade mark use in the course of trade in the UK, for the purposes of Paragraph 3. In my judgment the existence of the link to a Merck branded website cannot be excused on the basis that it appeared in an MSD branded environment. It also seems to me that this use of Merck affected the function of Merck as a trade mark in the UK as denoting the goods and services of Merck Global. In my view the use of Merck in the link to the Merck Covid Research Website which was provided on the MSD Website constituted a breach of Paragraph 3 by the First and Second Defendants, if Sub-paragraph (h) is put to one side.

This leaves Sub-paragraph (h). In this respect the position seems to me, on the basis of the evidence to which I have been directed, fairly straightforward. I will take each complaint in turn.

So far as the first complaint is concerned, the use of Merck in the first line of the First Company Statement was not, on my analysis, a permissible use of Merck. On the basis of the evidence to which I have been directed however, this seems to me to have been the result of a genuine error; see in particular the evidence of Ms Choi quoted above.

Turning to the second complaint, the MSD website should have contained, in the First Company Statement, a link to the MSD Covid Research Website. The fact that it did not seems to me, on the basis of the evidence to which I have been directed, to have been a genuine error, falling within the terms of Sub-paragraph (h); see again, in particular, the evidence of Ms Choi quoted above.

The Claimant sought to argue that this was not a case of inadvertent error, but rather of the Defendants importing into the MSD Website material appropriate only for a US audience, and seeking to modify that material. If I have understood the argument correctly, the Claimant’s case is that this was not inadvertent error but, in the case of both complaints, the result of the deliberate import of US only material into the MSD Website, thereby inserting prohibited material into the MSD Website. I am not able to accept this argument. It seems to me to rest on a concept of inadvertent error which is too narrowly confined. The provenance of the material on the MSD Website does not seem to me to be directly relevant in this context. The relevant point seems to me to be that Merck US understood the need to weed out illegitimate references to Merck such as that which appeared in the First Company Statement and that which appeared in the link to the Merck Covid Research Website, and to weed out links to the wrong (ie. Merck as opposed to MSD) website. What went wrong, according to Ms Choi, was that the weeding out process was not quite thorough enough. This is to be regretted, but errors of this kind do happen. In this instance it seems to me that the weeding out errors were inadvertent, were the subject of prompt corrective action, and were the kind of errors which Sub-paragraph (h) was intended to excuse.

I therefore conclude that the breaches of the Order alleged in Row F have not been established. This is because the First and Second Defendants are entitled to rely upon Sub-paragraph (h), with the consequence that the matters complained of in Row F, which would otherwise have constituted breaches of Paragraph 2 and a breach of Paragraph 3, did not constitute breaches of Paragraph 2, and did not constitute a breach of Paragraph 3.

It is convenient to take Rows A, C and D together, for reasons which I shall explain. I start with Row A.

The complaint in Row A is that Merck was used on the Merck Covid Research Website and in the domain name. Details of the complaint are set out in Day 2, at paragraphs 6-13. Screenshots of the web material and search results relied upon by the Claimant are in MCJD-3. The screenshots of the Merck Covid Research Website were taken on 5^th October 2021.

The Claimant says that these uses of Merck constituted breaches of Paragraph 2 and breaches of Paragraph 3 by the First Defendant. The Paragraph 2 column in the Table shows a dispute for this Row. The MSD Defendants deny that there was use of Merck within the UK within the meaning of Paragraph 2. The MSD Defendants also deny that there were breaches of Paragraph 3, on the basis that there was no use of Merck as a trade mark in the course of trade in the UK for the purposes of Paragraph 3. In the case of the alleged breaches of Paragraphs 2 and 3 the MSD Defendants rely upon Sub-paragraph (h).

In Kantor 1, at paragraphs 11 and 12, Ms Kantor provides the following explanation of the intention behind the Merck Covid Research Website and the MSD Covid Research Website:

The extensive use of Merck on the Merck Covid Research Website is not a surprise. The case of the MSD Defendants is that the website is a US site, intended for the use of residents of the US and Canada. It is the website to which a link previously existed from the MSD Website, in the First Company Statement; see my analysis of Row F above. As I have already mentioned, there is the equivalent MSD Covid Research Website. It is in these circumstances that the MSD Defendants deny any breach of Paragraph 2 or Paragraph 3, and also rely upon Paragraph (h).

The key question here seems to me to be one of targeting. Was the Merck Covid Research Website targeted at the UK? It seems to me that this question has to be considered by reference to the website itself. If and to the extent that the link from the MSD Website is relied upon in this context, I have already decided that there was no breach in this respect, by virtue of the ability of the MSD Defendants to rely upon Sub-paragraph (h).

The problem for the Claimant in this context seems to me to be that once one puts the erroneous link to one side, one is left with the Merck Covid Research Website, which was intended for US consumption, and sat alongside the MSD Covid Research Website, which was intended for consumption in the rest of the world (outside the Permitted Territories) including the UK. Applying the law on targeting and considering the evidence relevant to Row A I find it hard to see how the Merck Covid Research Website could be said to be targeted at the UK, from the perspective of the Consumer. To use the language of Daniel Alexander KC in Abanka, the Merck Covid Research Website seems to me, on the evidence, to fall into the category of “pull”, rather than “push”. Even if, which I have not accepted, there is any material difference in relation to the test of targeting in relation to Paragraph 2, I still cannot see that the Merck Covid Research Website could be said to have been targeted at the UK.

The same reasoning seems to me to apply to Rows C and D because, in each case, the complaint relates to a website reached from the Merck Covid Research Website, and thus relates back to the link from the MSD Covid Research Website. In the case of Rows C and D the Claimant argued that the relevant websites contained information about clinical trials which were taking place on a worldwide basis, including in the UK, with no equivalent MSD branded website. The Claimant also pointed to the remedial measures taken by the Defendants more recently, involving the creation or intended creation of MSD branded equivalent websites and other measures to tie the Merck branded websites more closely to a US audience; see the evidence of Ms Oakes (Director of Global Trial Optimisation of the First Defendant) in Oakes 1, paragraphs 8-20, and (generally) in Oakes 2. I commend the measures which the Defendants have taken. The more the separation of the Merck and MSD brands which is achieved, the less the likelihood for future dispute. I do not think that it follows however that the websites referred to in Rows C and D could be characterised as targeted at the UK, prior to these measures being taken. On the evidence, and applying the relevant law, I am not persuaded that any of these websites were targeted at the UK.

Given the above conclusions on targeting, the question of whether the MSD Defendants can rely upon Sub-paragraph (h), in relation to Rows A, C and D does not strictly arise. There is no breach to be excused by Sub-paragraph (h). If and in so far as the link from the MSD Website is relied upon in this context, my analysis in relation to Row F applies, and the MSD Defendants can rely upon Sub-paragraph (h). Given this position, I do not think that it is necessary or appropriate to consider what the position would have been if I had decided that the matters complained of in Rows A, C and D or any of them had constituted a breach of Paragraph 2 and/or Paragraph 3, independent of the complaint in Row F.

In these circumstances I conclude that the breaches of the Order alleged in Rows A, C and D have not been established. This is because the Claimant has failed to establish that any of the websites complained of in these Rows were themselves targeted at the UK, save by means of the link complained of in relation to Row F, in which respect the First Defendant and the Second Defendant (in the case of Row D) are entitled to rely upon Sub-paragraph (h).

The complaint in Row E relates to two uses of Merck on the MSD Covid Research Website. Details of the complaint are set out in Day 2, at paragraphs 28-32. The material relied upon by the Claimant is in MCJD-3. The relevant screenshots were taken on 14^th October 2021. Merck appeared as a logo in a section of the website entitled “About MSD’s Covid 19 Research”. Merck also appeared as a logo in an embedded video in this section of the website.

The Claimant says that each of these uses of Merck constituted a breach of Paragraph 2 and a breach of Paragraph 3 by the First Defendant. The response of the MSD Defendants is that there was no breach of Paragraph 3, on the basis that there was no use of Merck as a trade mark in course of trade in the UK for the purposes of Paragraph 3. In the case of the alleged breaches of Paragraphs 2 and 3 the MSD Defendants rely upon Sub-paragraph (h). The Paragraph 2 column in the Table shows no dispute for this Row.

In Kantor 1, at paragraphs 22-24, Ms Kantor explains that each logo was included in this section of the website as a result of an oversight on her part.

I am satisfied, on the evidence and applying the relevant principles of law, that the uses of Merck which are complained of in Row E did constitute breaches of Paragraph 2, if Sub-paragraph (h) is put to one side.

There is then the question of whether there were, by reason of these uses of Merck, breaches of Paragraph 3, if Sub-paragraph (h) is put to one side. It seems clear to me, putting Sub-paragraph (h) to one side, that the answer to this question is yes. On the evidence, the MSD Covid Research Website was targeted at the UK. It seems to me that these uses of Merck were trade mark uses, associating Merck with the promotion of the goods and services of Merck US on the MSD Covid Research Website. It also seems to me that this affected the function of Merck as a trade mark in the UK as denoting the goods and services of Merck Global. In my view the uses of Merck complained of in Row E did constitute breaches of Paragraph 3 by the First Defendant, if Sub-paragraph (h) is put to one side.

This leaves the question of whether the First Defendant can rely upon Sub-paragraph (h). So far as Sub-paragraph (h) is concerned, and applying my reasoning in relation to Row F, it seems to me that the inclusion of each Merck logo was an inadvertent error. This seems to me to be clear from the evidence of Ms Kantor. The Claimant’s arguments that this was not a case of inadvertent error seem to me to fail for essentially the same reasons as they fail in relation to the breaches alleged in Row F. The MSD Defendants’ case, which I did not understand to be disputed, is that the offending material was removed from the website, so that there was prompt corrective action.

I therefore conclude that the breaches of the Order alleged in Row E have not been established. This is because the First Defendant is entitled to rely upon Sub-paragraph (h), with the consequence that the matters complained of in Row E, which would otherwise have constituted breaches of Paragraphs 2 and 3, are not breaches of Paragraphs 2 and 3.

The complaint in Row G relates to a Second Company Statement (“the Second Company Statement”). The Second Company Statement is a further company statement which was published by the First Defendant on the MSD Website on 11^th October 2021, entitled “MSD and Ridgeback Announce Submission of Emergency Use Authorization Application to the U.S. FDA for Molnupiravir, an Investigational Oral Antiviral Medicine, for the Treatment of Mild-to-Moderate COVID-19 in At Risk Adults”.

As explained in Day 2, at paragraphs 41-47, the complaint is that the Second Company Statement included the use of Merck. The relevant screenshots, exhibited to Day 2, were taken on 14^th October 2021. The first line of the Second Company Statement was in the following terms:

The Claimant’s case is that the use of the word Merck in this first line of the Second Company Statement was a breach of Paragraph 2. The Paragraph 2 column in the Table shows no dispute for this Row. The MSD Defendants do however rely upon Sub-paragraph (h). Breach of Paragraph 3 is not alleged in relation to Row G.

I am satisfied, on the evidence and applying the relevant principles of law, that the use of Merck which is complained of in Row G did constitute a breach of Paragraph 2, if Sub-paragraph (h) is put to one side.

This brings me to the question of whether the First Defendant can rely upon Sub-paragraph (h), to avoid what would otherwise have been a breach of Paragraph 2. In this context I have already set out the evidence of Ms Choi, in Choi 1 at paragraphs 15 and 16. On the basis of this evidence it seems to me that the MSD Defendants are entitled to rely upon Sub-paragraph (h); see my reasoning on this issue in relation to Row F. As with Row F the Claimant has argued that the Defendants took inadequate steps to prevent mistakes of this kind occurring. In particular, the Claimant makes reference to the evidence of Courtney Ronaldo, Executive Director in Global Communications of the First Defendant, in Ronaldo 1. The evidence of Ms Ronaldo is relevant in this context because the Part 18 Requests posed a number of questions to Ms Choi on her evidence. As Ms Choi was, at the relevant time, on maternity leave, Ms Ronaldo made a witness statement answering those questions put to Ms Choi which Ms Ronaldo could answer. In relation to Ms Choi’s evidence, as quoted above, in paragraph 15 of Choi 1, the question which was asked was what procedures existed to prevent mistakes of the kind identified in paragraph 15 occurring. The answer, at paragraph 55 of Ronaldo 1, was in the following terms:

The Claimant complains that, looking at other parts of Ms Ronaldo’s evidence, it can be inferred that this practice was in place at the time when the uses of Merck complained of in Rows F and G occurred. I am doubtful that this can be extracted from Ms Ronaldo’s evidence, but I do not think that this matters, because I do not think that this particular point is relevant, even if the Claimant’s interpretation of the evidence of Ms Ronaldo is correct. I take the Claimant’s point to be that this is an example of a case where the error does not qualify as inadvertent because it could have been avoided if the Defendants had adopted a different practice; namely creating the MSD branded material separately, rather than trying to edit Merck branded material. This is therefore an example of the Claimant’s argument that an error is not inadvertent for the purposes of Sub-paragraph (h) if it could have been avoided by better practice. I have declined to accept that argument as a general principle, although I have left the argument as one to consider on a case by case basis. In this case I do not see that the error was disqualified from being inadvertent because it is possible to think of a way in which it could have been avoided. Such is always likely to be the case where an inadvertent error occurs. What seems to me to matter is whether the error was accidental, in the sense which I have identified in my earlier analysis of Sub-paragraph (h). The fact that the error could have been avoided by a different practice may throw light on whether the error was in fact accidental, in what I have decided is the required sense, but I do not think that an error is necessarily rendered non-accidental because it could have been avoided by a different practice. In the case of Rows F and G it seems to me that the errors were accidental, in what I have decided was the required sense, and were followed by prompt corrective action. While I would encourage Merck US to do all that it can to adopt practices which minimise the possibility of errors occurring, this is not the same thing as deciding whether an accidental error, in the required sense, has occurred.

I therefore conclude that the breach of the Order alleged in Row G has not been established. This is because the First Defendant is entitled to rely upon Sub-paragraph (h), with the consequence that the use of Merck complained of in Row G, which would otherwise have constituted a breach of Paragraph 2, is not a breach of Paragraph 2.

These two Rows can conveniently be taken together. The complaints in Rows H and I relate to contact email addresses which appeared for three individuals on the MSD Website. The three email addresses, which are listed under the heading of “Media contact details”, appeared on two different pages on the MSD Website. Details of the complaint are given in Day 2, at paragraphs 48-56. The relevant screenshots exhibited to Day 2 were taken on 11^th October 2021 (Row H) and 8^th October 2021 (Row I).

The Claimant says that these uses of @merck.com email addresses constituted breaches of Paragraph 2 and breaches of Paragraph 3 by the First Defendant. The Paragraph 2 column in the Table shows no dispute for these Rows, but the MSD Defendants rely upon Sub-paragraph (d), and also rely upon Sub-paragraph (h). The MSD Defendants also deny that there was a breach of Paragraph 3, independent of Sub-paragraph (d) and Sub-paragraph (h), on the basis that there was no use of Merck as a trade mark in the UK for the purposes of Paragraph 3.

The allegations of breach in Rows H and I are addressed by Samantha Melvin, Senior Specialist in the Creative & Ops, Global Communications Team of the First Defendant. The relevant evidence is at paragraphs 23-26 of Melvin 1, where Ms Melvin says this:

I start with the question of whether Sub-paragraph (d) can be relied upon. For ease of reference I repeat its terms:

The evidence is that the three individuals whose email addresses appeared on the MSD Website were US based employees of Merck US. The email addresses were included in the media library pages for the reasons identified by Ms Melvin.

The Claimant has argued that Sub-paragraph (d) is narrow in its effect. It is the email equivalent to the exception provided by the 1975 Protocol, to the effect that letters emanating from the US being sent into other territories could nonetheless be typed on the domestic stationary of Merck US. My attention has also been directed to the terms of Sub-paragraph (f). The essential point made by the Claimant is that there is a significant difference between an individual based in the US sending an email to specific recipients concerning a business enquiry, and Merck US linking itself to Merck on UK targeted websites, by publishing the email addresses of specific employees. If this was permitted, so it is argued, MSD websites could liberally be plastered with references to Merck, by the inclusion of more and more email addresses for US based employees.

My attention has also been drawn to what was said by Sir Alastair in the Remitted Issues Judgment, at [128]. In this part of the Remitted Issues Judgment Sir Alastair was considering the question of whether email addresses should be required to be changed for employees of Merck US based neither in the UK nor in the Permitted Territories. Sir Alastair decided that this should not be required. His third reason for this decision was explained at [128] in the following terms:

The difficulty which seems to me to confront the Claimant in this context is that Sub-paragraph (d) is not drafted in such a way as to have the narrow effect contended for by the Claimant. Sub-paragraph (d) permits the Defendants to use, in the ordinary course of business, email addresses ending @merck.com for employees based outside the UK. The limitations on the scope of this Sub-paragraph are to be found in the requirement that the relevant employees be based outside the UK, and that the use of the relevant email addresses be in the ordinary course of business. In the present case the evidence is that the employees were based outside the UK. I find it very hard to see how the use of their email addresses for contact purposes, in the relevant pages of the MSD Website, was not use in the ordinary course of business. The media contact details provided were, it seems to me, clearly part of the ordinary business of Merck US. I do not see that what was said by Sir Alastair in the Remitted Issues Judgment helps the Claimant in this respect. Sir Alastair was contemplating an artificial transfer of business out of the UK and into the Netherlands so that what had previously been UK based operations and functions could be conducted using @merck.com email addresses. The issue in the present case is a different one, involving the use of these email addresses for employees based outside the UK, in circumstances where there is no evidence that the employees were relocated out of the UK in order to take advantage of Sub-paragraph (d).

I do not think that Sub-paragraph (f) can assist the Claimant in this context. It is true that Sub-paragraph (f) permits internal use of @merck.com email addresses. It might be thought odd if Sub-paragraph (d) is not similarly confined to internal email use. The problem is however that Sub-paragraph (d) is not so confined. In this respect there is an obvious contrast between the wording of Sub-paragraph (f), with its express reference to internal use not accessible to third parties, and Sub-paragraph (d), where this wording is missing.

I take the Claimant’s point that, in the CA Judgment, Kitchin LJ decided that the use of Merck in an email address did constitute a breach of the Agreement when done outside the Permitted Territories, such as in material targeted at the UK; see the CA Judgment at [118]-[139]. I am not however directly applying the findings and decisions in the CA Judgment. I have to construe Sub-paragraph (d). As I have previously explained, the Sub-paragraphs all serve, with the exception of Sub-paragraph (h), to identify the parameters of Paragraphs 2 and 3. To return to Mr Hobbs’ example, Sub-paragraphs (a)-(g) assist in defining the boundaries of the Relevant Land, for the purposes of determining whether a trespass has taken place. While I can see the problem of @merck.com email addresses being used extensively as contact addresses on MSD websites, I cannot see that this amounts to a breach of Paragraph 2 or Paragraph 3, provided that the relevant employee is based outside the UK and the use of the email falls within the ordinary course of business.

Finally, I do not think that the Claimant is assisted by the fact that the Defendants took action to change the relevant email addresses on the MSD Website to @msd.com email addresses; see Melvin 1 at paragraph 26. I commend, again, the Defendants for taking this action. Indeed, and I cannot stress this too highly, I would encourage the parties to adopt this approach wherever possible, when matters of dispute arise. I am however here concerned with the meaning and effect of Sub-paragraph (d). I do not think that this issue is affected by the response of the Defendants to the complaints in Rows H and I. The MSD Defendants have not thereby admitted that the First Defendant was in breach of the Order.

In these circumstances it seems to me that the First Defendant can rely upon Sub-paragraph (d). It follows that the First Defendant did not breach Paragraph 2 or Paragraph 3 by the use of the email addresses which are complained of in Rows H and I.

It also follows that it is not strictly necessary for me to consider the two remaining issues, which are (i) whether there was no breach of Paragraph 3 in any event, if Sub-paragraph (d) is assumed not to apply and if Sub-paragraph (h) is put to one side, and (ii) whether the First Defendant can rely on Sub-paragraph (h). I will however consider briefly each of these questions.

So far as Paragraph 3 is concerned, and applying my reasoning on Paragraph 3 in relation to the Rows which I have so far considered, I would accept that the use of Merck in the relevant email addresses did qualify as use of Merck as a trade mark in the course of trade in the UK, for the purposes of Paragraph 3, if Sub-paragraph (h) is put to one side.

Turning to Sub-paragraph (h), I do not think that Sub-paragraph (h) can be relied upon by the First Defendant in this context. It is clear from the evidence of Ms Melvin that this was not a case of inadvertent error; see my analysis of Sub-paragraph (h) earlier in this judgment. To the contrary, Ms Melvin’s understanding was that US based employees could use their @merck.com email addresses in communications on the MSD Website. I have decided that this understanding was correct, but if this understanding had been wrong, then it seems to me that the First Defendant would not have been entitled to rely on Sub-paragraph (h) in relation to Rows H and I.

I therefore conclude that the breaches of the Order alleged in Rows H and I have not been established. This is because the First Defendant is entitled to rely upon Sub-paragraph (d), with the consequence that the matters complained of in Rows H and I are not caught by the restrictions in Paragraph 2 or Paragraph 3.

The complaints in Row J relate to a virtual event, shown live on 14^th September 2021, entitled “Merck for Mothers 10^th Anniversary Virtual Event”. The virtual event was live streamed on the merckformothers.com website (“the merckformothers website”) and the msdformothers.com website (“the msdformothers website”). A recording of the live event was also made available subsequently on a video hosting website called Vimeo and the recording was also made available on the two websites which had hosted the live stream.

So far as Row J is concerned, the essential complaint, as I understand it, is that this event (“the Event”) contained prominent uses of Merck comprising (i) the use of Merck logos in the content window for the Event, (ii) uses of Merck in the video recording, and (iii) a chat function with a panel who were described as being moderated by “the Chief Patient Officer, Merck”; see Day 2 at paragraphs 57-62 and Day 3 at paragraphs 4-6. The evidence is that these various uses of Merck were apparent to those accessing the Event from the msdformothers website. The relevant screenshots were taken on 14^th September 2021 by the Claimant’s representative who joined the Event online. There are further screenshots of the video recording exhibited to Day 3.

The Claimant’s case is that these uses of Merck constituted breaches of Paragraph 2 and breaches of Paragraph 3 by the First Defendant. The Paragraph 2 column in the Table shows no dispute for this Row. The MSD Defendants rely upon Sub-paragraph (h) to deny that there were breaches of Paragraph 2 or Paragraph 3. In the case of Paragraph 3 the MSD Defendants deny that there were breaches, even if Sub-paragraph (h) is put to one side, on the basis that there was no use of Merck as a trade mark in the course of trade in the UK for the purposes of Paragraph 3.

The relevant evidence on the MSD Defendants’ side is found in the witness statements of Jacquelyn Caglia, Director of Learning, Communications and US Programs for the Merck for Mothers initiative. Ms Caglia gives evidence that Merck US had intended to hold the Event as a live event, but had to resort to a virtual event by reason of the Covid pandemic. At paragraphs 28-31 of Caglia 1 Ms Caglia explains how the use of Merck appeared in the live stream in the following terms:

This is supplemented by the following evidence from Ms Caglia in paragraph 8 of Caglia 2:

In terms of the evidence I should also mention the evidence of Mr Koelle, General Counsel, Trademarks for the Claimant. In Koelle 4, at paragraph 5, Mr Koelle explains that he became aware of the Event on 9^th September 2021, and registered to attend the Event through, according to his evidence, the msdformothers website. This resulted in his registration for the Event, as the Merck for Mothers event. Mr Koelle forwarded the email he received, confirming his registration for the Event, to the Claimant’s solicitors.

In Caglia 2, at paragraph 9, Ms Caglia gives evidence of a review (carried out by a third party) of the record of Mr Koelle’s registration for the Event. Ms Caglia says that her information is that Mr Koelle registered for the Event through the merckformothers website and not through the msdformothers website. In response Mr Koelle says, in paragraphs 5 and 6 of Koelle 5, that on reflection he thinks it likely that he did sign up for the Event through the merckformothers.com website.

If Sub-paragraph (h) is put to one side, I am satisfied, on the evidence and applying the relevant principles of law, that the uses of Merck in relation to the Event constituted a breach of Paragraph 2. These uses of Merck were apparent to anyone accessing the Event from the msdformothers website, which was a website which was clearly targeted at those outside the Permitted Territories, including those in the UK.

Turning to Paragraph 3, and putting Sub-paragraph (h) to one side, it seems to me that the uses of Merck which are complained of did constitute breaches of Paragraph 3. The Event was a Merck branded event, by virtue of the prominent uses of Merck referred to in the evidence in Day 2 and Day 3. Access to the Event was made available through the msdformothers website, which was targeted at the UK. As such, it seems to me that the Event itself was targeted at the UK. The Event was an event which served to promote the goods and services of Merck US. It seems to me that the uses of Merck which are complained of were trade mark uses, associating Merck with the goods and services of Merck US which were promoted by the Event. By virtue of the targeting at the UK, and considering in the round how Merck was used in the presentation of the Event, it seems to me that these trade mark uses took place in the course of trade in the UK. It also seems to me that these uses affected the function of Merck as a trade mark in the UK as denoting the goods and services of Merck Global. I therefore conclude that these uses of Merck did constitute breaches of Paragraph 3, if Sub-paragraph (h) is put to one side.

This leaves Sub-paragraph (h). I cannot see however that Sub-paragraph (h) can assist the First Defendant. It seems to me clear from the evidence in Caglia 1 and in Caglia 2, as quoted above, that the use of Merck in connection with the Event, when accessed from the msdformothers website was not an inadvertent error. As Ms Caglia explains, the primary branding of the Event was under the Merck for Mothers branding. The appropriate division was not made between material marked Merck and MSD. Ms Caglia confirms that the advice she received at the time “guided us to the wrong conclusion on branding”.

I do not think that what happened can be classified as an inadvertent error. This was not a case where the need to carry out an editing or weeding out exercise was appreciated, but not carried out with sufficient thoroughness, so that a few references to Merck accidentally escaped the exercise. In this case, there was simply a failure to carry out the exercise at all. Instead, Merck US used its Merck branding for the Event, without distinction between the two websites from which the Event was to be accessed. In my judgment, this was not the kind of failure which Sub-paragraph (h) was intended to excuse.

The MSD Defendants sought to argue, in this context, that matters could have been put right, prior to the Event, if the Claimant had raised its concerns with Merck US promptly, and prior to the Event. The point here is that if Mr Koelle had reported his concerns to the Claimant’s solicitors, when he registered for the Event (on 9^th September 2021), it is said that there should have been time for the Claimant’s solicitors to raise the matter with the Defendants, prior to the Event itself (on 14^th September 2021). The point is made that Sir Alastair, in the Remitted Issues Judgment at [100], envisaged that the Claimant would raise any concerns it had promptly with Merck US.

I do not think that this argument assists the MSD Defendants. While I can see the merits of both sides raising concerns with each other on a prompt basis, Sub-paragraph (h) does not require the Claimant to raise concerns with Merck US within any particular time scale, or indeed at all. If a breach does occur as a result of an inadvertent error, the Defendants have the benefit of their time for correction of the error not running until they are given written notification of the error by the Claimant or they otherwise become aware of the error. This may be said to incentivise the Claimant to raise its concerns promptly with the Defendants and, as I have said, I can see the merits of concerns being raised promptly, but I cannot see that a failure by the Claimant to raise a concern can assist the Defendants in the case of a breach of the Order which does not qualify as an inadvertent error.

I should add that I am dubious that the Remitted Issues Judgment, at [100], does envisage what the MSD Defendants say it envisages. In this paragraph, Sir Alastair was considering the case for the grant of injunctive relief, which the Defendants were resisting. I do not think that the paragraph offers a reliable guide to the machinery of Sub-paragraph (h).

I therefore conclude that the Claimant has established that the First Defendant breached the Order, in the manner set out in Row J. This is because the First Defendant is unable to rely upon Sub-paragraph (h). In the absence of Sub-paragraph (h), I find and conclude that the First Defendant has, by reason of the matters set out in Row J, breached Paragraph 2 and Paragraph 3.

The complaint in Row K relates to the use of an @merck.com email address; see Day 2 at paragraphs 63-67. What happened was that an article (“the Article”) entitled “Strengthening systems for safer childbirth” was published on the msdformothers website on 14^th September 2021 (the day of the Event). A link at the end of the first line of the Article opened a pdf entitled “Calls for expression of interest”. To submit an expression of interest, applicants were invited on page 5 of the pdf to send their applications to the email address CSTMFORMOTHERS@merck.com. This email address was listed for a second time on the same page, stating that questions should be submitted by email to this address. Details of the complaint are given in Day 2, at paragraphs 63-67. The relevant screenshots exhibited to Day 2 were taken on 11^th and 18^th October 2021.

The Claimant says that the use of this email address was a breach of Paragraph 2 and a breach of Paragraph 3 by the First Defendant. The Paragraph 2 column in the Table shows no dispute for this Row. The MSD Defendants rely upon Sub-paragraph (d) and Sub-paragraph (h). Independent of these Sub-paragraphs, the MSD Defendants also deny that there was a breach of Paragraph 3.

In Caglia 1, at paragraphs 32-36, Ms Caglia explains how the inclusion of this email address came about. It is easiest simply to quote what Ms Caglia says, at paragraphs 33-36:

Starting with Sub-paragraph (d) it might be thought that there was no breach of Paragraph 2 or Paragraph 3, applying my reasoning in relation to Rows H and I. The email address was monitored by Mr Reading who was, according to Ms Caglia, an employee working in the US. The identification of this email address for contact purposes was, as it seems to me, something which happened in the ordinary course of business of Merck US.

There is however, in my view, a critical difference between Rows H and I and Row K. The email address which is complained of in Row K was not an email address for an employee of Merck US based outside the UK. The email address was, as is clear from its title, a generic email address, provided for the purposes of contacting Merck US. It is clear from Ms Caglia’s evidence that this email address was not an email address for Mr Reading, in his capacity as an employee of Merck US. Rather, it was a generic email address, which Mr Reading was required to monitor. In my view Sub-paragraph (d) is confined to the email addresses of employees of Merck US based outside the UK. I do not think that Sub-paragraph (d) extends to generic email addresses, whether or not there is a particular employee who is responsible for monitoring that email address.

This analysis seems to me to be borne out by the terms of Sub-paragraph (e), which permits the Defendants to continue to receive emails sent to a generic email address (medicalinformationuk@merck.com) “for a period of five years following the date they are notified of regulatory approval being granted for use in the UK of a replacement of that email address by an email address not featuring the sign MERCK”. The point made by the Claimant, which I accept, is that if it was considered necessary to make specific provision for the Defendants to continue to receive emails at this generic email address, in order to address problems with regulatory approval for a change of this email address, it cannot be right that the use of such generic email addresses is in fact permitted by Sub-paragraph (d), provided that they are monitored by an employee outside the UK.

I therefore conclude that Sub-paragraph (d) does not apply in relation to the breach alleged in Row K. In the absence of Sub-paragraph (d), and leaving aside Sub-paragraph (h) for the moment, I am satisfied, on the evidence and applying the relevant principles of law, that there was a breach of Paragraph 2 as alleged in Row K.

This leaves Paragraph 3, before I come to Sub-paragraph (h). Although Merck appeared in an email address, its appearance was in the context of an invitation, on a website (the msdformothers website) targeted at the UK, to submit expressions of interest and questions to a Merck branded email address. The Merck for Mothers initiative was a promotional activity for Merck US. The message conveyed by the use of the email address was that the activities enabled by this email address were being provided by the party entitled to use Merck. In my view the use of Merck in this email address was trade mark use, associating Merck with the goods and services of Merck US which were promoted by the Merck for Mothers initiative. By virtue of the targeting at the UK, and considering in the round how the email address was used in the Article and in relation to the Merck for Mothers initiative, it seems to me that this trade mark use took place in the course of trade in the UK. It also seems to me that this use affected the function of Merck as a trade mark in the UK as denoting the goods and services of Merck Global. I therefore conclude that this use of Merck did constitute a breach of Paragraph 3, if Sub-paragraph (h) is put to one side.

Coming to sub-paragraph (h) it is not entirely clear to me how this is relied upon in relation to Row K. As I read her evidence, Ms Caglia does not explain how the email address found its way into the pdf calling for expressions of interest and questions. Nor have I been directed to any other explanation, in the evidence, as to how the email address came to be included in the pdf. In this context, it is interesting to note that Ms Caglia was asked by the Claimant to explain why an @msd.com email address was not used initially. as part of the Part 18 Requests. In paragraph 30 of Caglia 2 Ms Caglia simply refers back to paragraph 34 of Caglia and her reference to Mr Reading as the sole employee who monitored the email address. This response seems to me to have left the Claimant’s question unanswered.

Given the state of the evidence, all I know is that action was taken to remove the link and then to reinstate the same as a link to a revised version of the pdf with an @msd.com email address. I bear in mind that the burden is on the MSD Defendants to demonstrate that the inclusion of the original email address was an inadvertent error. In my view this has not been demonstrated, and Sub-paragraph (h) does not apply.

I therefore conclude that that the Claimant has established that the First Defendant breached the Order, in the manner set out in Row K. This is because the First Defendant is unable to rely upon Sub-paragraph (d) or Sub-paragraph (h). In the absence of Sub-paragraph (d) or Sub-paragraph (h), I find and conclude that the First Defendant has, by reason of the matters set out in Row K, breached Paragraph 2 and Paragraph 3.

The complaint in Row L is related to that in Row K. It will be recalled that the Article was hosted on the msdformothers website. The Article included, in its fourth paragraph, a link to a pdf document described as “MOMs Initiative”. The pdf was located on the merckformothers website. In addition to the fact that the pdf was hosted on a Merck website, the pdf contained various uses of Merck. These uses included the identification of the email address CSTMMOTHERS@merck.com as the email address to which businesses seeking investment from the MOMs Initiative should submit what was described as “a pitch deck”, outlining how they met the investment criteria. Details of the complaint are set out in Day 2, at paragraphs 68-72. The relevant screenshots were taken on 12^th October 2021.

The Claimant says that these uses of Merck constituted a breach of Paragraph 2 and a breach of Paragraph 3 by the First and Second Defendants. The Paragraph 2 column in the Table shows no dispute for this Row. The MSD Defendants rely upon Sub-paragraph (d) and Sub-paragraph (h). Independent of these Sub-paragraphs, the MSD Defendants also deny that there was a breach of Paragraph 3.

Ms Caglia responds to Row L in Caglia 1, at paragraphs 37-45. She says that the link in the Article, from the msdformothers website, to the MOMs Initiative pdf hosted on the merckformothers website was an error. She refers to a communications manual, which is explained earlier in Caglia 1, which she devised and which gave guidance on the communication channels in which Merck for Mothers branding was to be used and the communication channels in which MSD for Mothers branding was to be used. She says that the communications manual stated that content on the msdformothers website should avoid linking to merckformothers or materials referencing Merck for Mothers. Her explanation of the error, and the corrective action taken are set out in the following terms, at paragraphs 39-45:

I cannot see that Sub-paragraph (d) is available in the case of Row L. Sub-paragraph (d) would only be capable of applying, in any event, to the email address included for investment applications in the MOMs Initiative pdf. I cannot see that Sub-paragraph (d) assists with any of the other uses of Merck detailed in Row L. So far as the generic email address is concerned, and for the reasons which I have already set out in relation to Row K, I do not consider that Sub-paragraph (d) applies to the use of this generic email address.

In the absence of Sub-paragraph (d), and leaving aside Sub-paragraph (h) for the moment, I am satisfied, on the evidence and applying the relevant principles of law, that there were breaches of Paragraph 2 as alleged in Row L.

This leaves Paragraph 3, before I come to Sub-paragraph (h). It seems clear to me that the various uses of Merck which are complained of in Row L were uses of Merck as a trade mark in the course of trade in the UK, within the meaning of Paragraph 3. The Article appeared on the msdformothers website, which was targeted at the UK, amongst other countries. The link from the Article gave access to the MOMs Initiative, which was hosted on a Merck branded website, and was itself Merck branded. Beyond this, I refer to my reasoning in relation to Row K. I therefore conclude that the uses of Merck complained of in Row L did constitute breaches of Paragraph 3, if Sub-paragraph (h) is put to one side.

Coming to sub-paragraph (h), it seems to me that there are two problems with the reliance of the MSD Defendants upon sub-paragraph (h). The first problem is the question of whether the error referred to by Ms Caglia qualifies as an inadvertent error. The evidence of Ms Caglia is that Rabin Martin (I assume this is an agency, not an individual) included the wrong link. Beyond this however, the evidence is opaque. In particular, it is not clear how this error relates back to the evidence given by Ms Caglia in paragraphs 6-19 of Caglia 1 and the processes there described. There is also no evidence of what instructions or documents were given to Rabin Martin in relation to their work on the Article. As I have said, it is for the MSD Defendants to demonstrate inadvertent error. In my judgment the available evidence does not demonstrate that the various uses of Merck in the MOMs Initiatives pdf were the result of inadvertent error. The second problem is specific to the footnote which appeared in the MOMs Initiatives pdf. It is clear that this footnote remained in the MSD branded version of the pdf after the link to the Merck branded version of the pdf had been removed. Ms Caglia says that this was because she mistakenly thought that a pop up on the msdformothers website would be sufficient to permit retention of the footnote. This clearly was a mistake because the use of pop ups, as a means of staying within what is permitted by Paragraphs 2 and 3, is restricted to MSD branded UK specific websites; see Sub-paragraph 4(b). As I understand the position, the msdformothers website is global rather than specific to the UK. A mistake of this kind does not however qualify as an inadvertent error; see my earlier analysis of Sub-paragraph (h).

I therefore conclude that Sub-paragraph (h) does not apply to the uses of Merck which are set out in Row L.

I therefore conclude that the Claimant has established that the First Defendant breached Paragraph 2, in the manner alleged in Row L, and that the First and Second Defendants breached Paragraph 3, in the manner alleged in Row L. The First and Second Defendants are unable to rely upon Sub-paragraph (d), in relation to the email address used in the MOMs Initiative pdf. The First and Second Defendants are also unable to rely upon Sub-paragraph (h). In the absence of Sub-paragraph (d) or Sub-paragraph (h), I find and conclude, by reason of the matters set out in Row L, that the First Defendant has breached Paragraph 2 and Paragraph 3, and that the First and Second Defendants have breached Paragraph 3.

It is convenient to take Row R next, as it also concerns the use of an email address. The complaint in Row R is that the MSD Website hosted, as a pdf, a report. The report in question was entitled the “Environmental, Social and Governance (ESG) Progress Report 2018”. This report (“the ESG Report”) included, on page 25, the use of Merck within the email address corporate_responsibility@merck.com. Details of the complaint are set out in Day 2, at paragraphs 93-97. The relevant screenshots exhibited to Day 2 were taken on 20^th October 2021.

The Claimant says that the use of this email address on the MSD Website constituted a breach of Paragraph 2. The Paragraph 2 column in the Table shows no dispute for this Row. The MSD Defendants do however rely upon Sub-paragraph (d) and/or Sub-paragraph (h). Breach of Paragraph 3 is not alleged in relation to Row R.

The evidence in response to this complaint is given by Mr Woodall, Director on the Environmental, Social and Governance Strategy & Engagement Team for the First Defendant. In Woodall 1 Mr Woodall explains the procedures for the preparation of ESG reports, which involves the preparation of an MSD branded version for use outside of the US, to be published on the MSD Website, and a Merck branded version for use in the US, to be published on the Merck Website. The process starts with the creation of the Merck branded version, which is then revised for use as the MSD version. The ESG Report did not however go through this process. As Mr Woodall explains, at paragraph 17 of Woodall 1:

In paragraph 12 of Woodall 1 Mr Woodall explains that the email address appearing on page 25 of the ESG Report was monitored by an individual member of the ESG Team, whose name he cannot recall. The ESG Team was then based in Kenilworth, New Jersey, and is now based in Rahway, New Jersey.

So far as the MSD Defendants’ reliance upon Sub-paragraph (d) is concerned, the email address in question was a generic Merck US email address, monitored by an individual based in the US. In these circumstances my reasoning in relation to Rows K and L applies. The First Defendant cannot rely on Sub-paragraph (d). In the absence of Sub-paragraph (d), and leaving aside Sub-paragraph (h) for the moment, I am satisfied, on the evidence and applying the relevant principles of law, that there was a breach of Paragraph 2 as alleged in Row R.

This leaves Sub-paragraph (h). I do not think that Sub-paragraph (h) is available either. The short point is that the ESG Report predated the procedures described by Mr Woodall for creating Merck branded and MSD branded ESG reports. I assume therefore, from Mr Woodall’s evidence, that the inclusion of this email address in the ESG Report was not the result of an adaptation or proof reading error. As I read Mr Woodall’s evidence, the email address was included in the ESG Report because the relevant persons (I assume the ESG Team) did not appreciate that a generic Merck US email address should not be in the ESG Report. This was not an inadvertent error, and Sub-paragraph (h) is not engaged.

I therefore conclude that the Claimant has established that the First Defendant breached the Order, in the manner set out in Row R. This is because the First Defendant is unable to rely upon Sub-paragraph (d) or Sub-paragraph (h). In the absence of Sub-paragraph (d) or Sub-paragraph (h), I find and conclude that the First Defendant has, by reason of the matter set out in Row R, breached Paragraph 2.

Row U also concerns an email address, so I deal with it before resuming alphabetical progress. The complaint in Row U is that the msd-uk.com website hosted, as a pdf, a document entitled “Independent Grant Request MSD Oncology Policy Grant Program”. The document included instructions on how to apply for a grant from the Program. Applications were required to be sent by email to “our US-based MSD Global Oncology Policy team at oncopolicy02@merck.com”. This email address thus included Merck. Details of the complaint are set out in Day 2, at paragraphs 106-108. The relevant screenshots exhibited to Day 2 were taken on 8^th October 2021.

The Claimant says that the use of this email address in this document, hosted on the msd-uk.com website, constituted a breach of Paragraph 2. The Paragraph 2 column in the Table shows no dispute for this Row. The MSD Defendants do however rely upon Sub-paragraph (d) and/or Sub-paragraph (h). Breach of Paragraph 3 is not alleged in relation to Row U.

The evidence in response to this complaint is given by Nikki Carpenter, Grants and Contracts Manager of the First Defendant, working in the Global Oncology policy team. In her evidence in Carpenter 1, Ms Carpenter explains how the MSD Oncology Grant Program came to be prepared. At paragraphs 11-13 of Carpenter 1, Ms Carpenter explains how this email address was monitored:

Ms Carpenter explains how an @merck.com email address came to be included in the document at paragraphs 14-18 of Carpenter 1, in the following terms:

So far as the MSD Defendants’ reliance upon Sub-paragraph (d) is concerned, the email address in question was a generic Merck US email address. The evidence is that it was monitored by an individual based in the US (Thomas Braga), whose successor was also based in the US. In these circumstances my previous reasoning in relation to Rows K and L again applies. The First Defendant cannot rely on Sub-paragraph (d). In the absence of Sub-paragraph (d), and leaving aside Sub-paragraph (h) for the moment, I am satisfied, on the evidence and applying the relevant principles of law, that there was a breach of Paragraph 2 as alleged in Row R.

I do not think that the First Defendant can rely upon Sub-paragraph (h). It is clear from Ms Carpenter’s evidence that this was not a case of accidental oversight. The inclusion of the generic email address in the document was clearly deliberate. The generic email address was used because no one appreciated at the relevant time that it should not be used. As such, it seems to me that there was no inadvertent error capable of engaging Sub-paragraph (h).

I therefore conclude that the Claimant has established that the First Defendant breached the Order, in the manner set out in Row U. This is because the First Defendant is unable to rely upon Sub-paragraph (d) or Sub-paragraph (h). In the absence of Sub-paragraph (d) or Sub-paragraph (h), I find and conclude that the First Defendant has, by reason of the matter set out in Row U, breached Paragraph 2.

The complaint in Row M concerns a Twitter account for MSD for Mothers (@MSDforMothers). The Event was promoted through this account. The complaint in Row M is that tweets promoting the Event made use of Merck. Two instances are given in Day 2 (which the Claimant characterises as specific examples) at paragraph 74. In each instance the Merck for Mothers title (meaning the title of the initiative launched by Merck US with this branding) was used in the tweets. The relevant screenshots exhibited to Day 2 were taken on 17^th October 2021.

Row CC, which it is convenient to take together with Row M, concerns further tweets published on the same Twitter account, which again made use of the Merck for Mothers title. Two instances are given in Day 2 (which the Claimant characterises as further specific examples) at paragraph 141. The relevant screenshots exhibited to Day 2 were again taken on 17^th October 2021.

The Claimant says that these uses of Merck constituted a breach of Paragraph 2 and a breach of Paragraph 3 by the First Defendant. The Paragraph 2 column in the Table shows no dispute for these Rows. The MSD Defendants rely upon Sub-paragraph (h). Independent of Sub-paragraph (h), the MSD Defendants also deny that there was a breach of Paragraph 3, on the basis that there was no use of Merck as a trade mark in the UK for the purposes of Paragraph 3.

Leaving aside Sub-paragraph (h) for the moment, I am satisfied, on the evidence and applying the relevant principles of law, that the uses of Merck which are complained of in Rows M and CC did constitute breaches of Paragraph 2.

This leaves Paragraph 3, before I come to Sub-paragraph (h). The tweets appeared on a Twitter account for MSD for Mothers. The tweets were therefore targeted at the UK, amongst other countries. While it is true that the tweets appeared in an MSD branded environment, it is important to examine the screenshots of the tweets, as exhibited to Day 2, in order to see what message they conveyed. The actual message in each tweet made reference to the Merck for Mothers initiative, which was a promotional activity of Merck US. It seems to me that the message to the Consumer conveyed by the tweets was that the initiative being promoted by the tweets was the initiative of the party entitled to use Merck in connection with its goods and services. I bear in mind the importance, as the Supreme Court emphasized in Lifestyle Equities, of avoiding an approach which results in a failure to see the wood for the trees, but it seems to me that the uses of Merck in the tweets, notwithstanding their appearance in an MSD branded environment, did constitute uses of Merck as a trade mark in the course of trade in the UK for the purposes of Paragraph 3. It also seems to me that these uses affected the function of Merck as a trade mark in the UK as denoting the goods and services of Merck Global. I therefore conclude that the uses of Merck complained of in Rows M and CC did constitute breaches of Paragraph 3, if Sub-paragraph (h) is put to one side.

Turning to Sub-paragraph (h), Ms Caglia deals with Row M, together with Row CC, in paragraphs 46-48 of Caglia 1. At paragraphs 47 and 48, Ms Caglia says this:

This evidence is supplemented in Caglia 2, at paragraph 13 and, in answer to a request to explain the error referred to in paragraph 47 of Caglia 1, at paragraphs 36 and 37, as follows:

It seems to me that this was a case of inadvertent error, in relation to all the tweets which are complained of in Rows M and CC. The references to Merck for Mothers appeared in tweets posted on the MSD for Mothers Twitter account. The problem was that these stray references found their way into posts on the MSD for Mothers Twitter account, where they were not supposed to appear. Ms Caglia says that this was the error of MMC and, critically, that this was contrary to pre-approved posts which included MSD rather than Merck, in circumstances where MMC were aware that they needed to use MSD versions of these posts.

The Claimant submitted that the evidence given by Ms Caglia, as between Caglia 1 and Caglia 2 is not consistent. In Caglia 1 Ms Caglia states that two versions of the posts, under the Merck and MSD branding, were created and approved by herself. In Caglia 2 Ms Caglia states that MMC made a copy and paste error. This is difficult to understand, if a version of the post for the MSD for Mothers Twitter account had already been approved by Ms Caglia. In order for the error to have been a copy and paste error MMC would have had to have copied and pasted something. It is difficult to understand what could have been copied and pasted, if there was already an MSD branded post, without the stray references to Merck for Mothers, approved by Ms Caglia and ready to be posted.

In the absence of cross examination that is not a matter which I can investigate further. The evidence as to precisely how the error occurred is ambiguous. In this instance however I do not think that this ambiguity is fatal to the MSD Defendants’ case on Sub-paragraph (h). What is clear from the evidence of Ms Caglia, as I read that evidence, is that the intention was that the posts on the MSD for Mothers Twitter account should be clear of any use of Merck. Somehow or other, the references to Merck for Mothers found their way into the posts. Ms Caglia is clear that this was not supposed to happen, and that MMC were aware that this was not supposed to happen. Ms Caglia also gives evidence that prompt corrective action was taken. In these circumstances I accept that the inclusion of Merck for Mothers in the posts was the result of inadvertent error, so that Sub-paragraph (h) can be relied upon.

I therefore conclude that the breaches of the Order alleged in Rows M and CC have not been established. This is because the First Defendant is entitled to rely upon Sub-paragraph (h), with the consequence that the matters complained of in Rows M and CC, which would otherwise have constituted breaches of Paragraphs 2 and 3, are not breaches of Paragraphs 2 and 3.

The complaint in Row N concerns the use of an email address in the msdformothers website. The email address is jackie.califano@merck.com. In Day 2, at paragraphs 77-79, Mr Day explains that the “Connect” page of the website included, under the title “Media inquiries”, the statement “For press and media inquiries, please contact Jackie Califano”. Clicking on the hyperlinked name, Jackie Califano, opened a new email window addressed to jackie.califano@merck.com. The relevant screenshots of the process, exhibited to Day 2, were taken on 11^th October 2021.

The Claimant says that the use of this email address on the link from the msdformothers website constituted a breach of Paragraph 2. The Paragraph 2 column in the Table shows no dispute for this Row, but the MSD Defendants rely upon Sub-paragraph (d). There is no reliance upon Sub-paragraph (h). Breach of Paragraph 3 is not alleged in relation to Row N.

Ms Califano is one of the three individuals whose email address is also the subject of the complaints in relation to Rows H and I. She was a US based employee of Merck US; see Melvin 1 at paragraph 25. Ms Califano’s employment came to an end in February 2022, whereafter the email address was updated to mediarelations@msd.com; see Caglia 1 at paragraphs 49-51.

While this updating was plainly a sensible measure to take, with a view to avoiding areas of conflict, it seems to me that this use of Ms Califano’s email address fell squarely within Sub-paragraph (d); see my reasoning in relation to Rows H and I. In relation to Row N there is the minor difference that the email address only became visible after clicking on the relevant link on the msdformothers website, but I do not think that this minor difference is material to the application of my reasoning in relation to Rows H and I.

I therefore conclude that the breach of the Order alleged in Row N has not been established. This is because the First Defendant is entitled to rely on Sub-paragraph (d), with the consequence that the matter complained of in Row N is not caught by the restrictions in Paragraph 2.

It is convenient to take Rows O and B together, and to start with Row O. The complaint in Row O concerns a privacy policy webpage, a link to which was provided from a footer in the msdformothers website. The privacy policy webpage is msdprivacy.com/us/en. Once one reached this webpage it was branded with a Merck logo heading and also had a reference to what is described as a “Merck Coupon Program”. Details of the complaint are set out in paragraphs 80-83 of Day 2. The relevant screenshots exhibited to Day 2 were taken on 18^th October 2021.

The Claimant says that these uses of Merck on the privacy policy webpage constituted breaches of Paragraph 2 and breaches of Paragraph 3 by the First Defendant. The Paragraph 2 column in the Table shows no dispute for this Row. The MSD Defendants deny that there was a breach of Paragraph 3, on the basis that there was no use of Merck as a trade mark in the course of trade in the UK for the purposes of Paragraph 3. In the case of the alleged breaches of Paragraphs 2 and 3 the MSD Defendants rely on Sub-paragraph (h).

The circumstances in which the uses of Merck on the privacy policy webpage came about are dealt with by Ms Caglia in paragraphs 8 and 52-54 in Caglia 1. Ms Caglia says this:

In response to the Part 18 Requests Ms Caglia gave further evidence in relation to Row O in Caglia 2. In paragraph 14 of Caglia 2 Ms Caglia repeated the point that an error was made by SPI Group who should have provide a link to the general MSD privacy website. In paragraphs 40 and 41 of Caglia 2, Ms Caglia responded as follows to requests for further explanation of the error:

I am satisfied, on the evidence and applying the relevant principles of law, that the uses of Merck which are complained of in Row O did constitute breaches of Paragraph 2, if Sub-paragraph (h) is put to one side.

Turning to Paragraph 3, the use of Merck on a privacy policy webpage is not, at least directly, promotional or branding use. The privacy policy is however linked to the msdformothers website, which promotes the goods and services of Merck US under the MSD brand. The question is therefore whether, from the perspective of the Consumer, the Merck branding on the privacy policy webpage associated the activities referred to on the msdformothers website with Merck US as the ultimate originator of those activities, through the MSD brand. It seems to me that there is such an association, in the case of the Merck logo appearing at the top of the privacy policy webpage, although I do not think that the same is true of the reference to the Merck Coupon Program. Applying the approach adopted by Sir Alastair in the Remitted Issues Judgment, it seems to me that a Consumer visiting the privacy policy webpage would assume that Merck US was the ultimate originator of the activities (which are themselves clearly promotional activities) on the msdformothers website, thereby imperilling the function of Merck as a mark denoting, in the UK, Merck Global as the originator of such activities under the Merck branding. I am therefore satisfied, on the evidence, that the use of Merck as a logo, which is complained of in Row O, was use of Merck as a trade mark in the course of trade in the UK for the purposes of Paragraph 3. I therefore conclude the use of Merck as a logo, being one of the complaints in Row O, did constitute a breach of Paragraph 3, if Sub-paragraph (h) is put to one side.

This then leaves Sub-paragraph (h). It seems to me, on the basis of Ms Caglia’s evidence, that this was clearly a case of inadvertent error. The Claimant criticises Ms Caglia’s evidence in Caglia 2 as uninformative, but it seems to me that what Ms Caglia says is sufficient to establish that this case was one of inadvertent error, which was then the subject of prompt corrective action. In these circumstances it seems to me that the First Defendant is entitled to rely upon Sub-paragraph (h).

I note that Ms Caglia explains, in paragraphs 16-18 of Caglia 2, that Merck US has changed its approach to producing MSD branded material, so that MSD branded material is created independently, rather than being produced by the adaptation of Merck branded material. This is clearly to be welcomed, as a means of reducing the scope for conflict, and it reflects a measure which the Claimant says should have been taken to avoid this kind of error. I do not think however that this means that the error described by Ms Caglia, which I assume predated the introduction of the new process, is disqualified from falling within the terms of Sub-paragraph (h).

This leaves Row B. The complaint here relates to the same privacy policy webpage, but arises from the fact that there was a link to this page from the Merck Covid Research Website, via the link from the First Company Statement in the MSD Website, which is the subject of the complaint in Row F. It seems to me that the position in relation to Row B is governed by my analysis of Row F and Row O. So far as the complaint is that this webpage could be accessed from the MSD Website, my analysis in relation to Row F applies, so that the First Defendant can rely upon Sub-paragraph (h). So far as the complaint is that the privacy policy webpage contained Merck branding, my analysis in relation to Row O applies, so that the First Defendant can again rely upon Sub-paragraph (h).

I therefore conclude that the breaches of the Order alleged in Rows O and B have not been established. This is because the First Defendant is entitled to rely upon Sub-paragraph (h), with the consequence that the matters complained of in Rows O and B, which would otherwise have constituted breaches of Paragraphs 2 and 3, are not breaches of Paragraphs 2 and 3.

It is convenient to take Rows P and HH together. I start with Row P. The complaint in Row P is that Merck US promoted jobs available in its organisation, throughout the world, at jobs.merck.com, which used Merck branding. The jobs advertised included jobs expressed to be located in the UK. Details of the complaint are set out in Day 2, at paragraphs 84-87. The relevant screenshots exhibited to Day 2 were taken on 5^th October 2021.

The Claimant says that this promotion of UK jobs on a Merck branded website constituted breaches of Paragraph 2. The Paragraph 2 column in the Table shows a dispute for this Row. The MSD Defendants deny that there was use in the UK within the meaning of Paragraph 2. Breach of Paragraph 3 is not alleged in relation to Row P.

The evidence in response to this complaint is given by Michael Domingo, Associate Director of Talent Solutions at the First Defendant. In Domingo 1, at paragraphs 11-14, Mr Domingo gives the following explanation of what jobs, outside the US and Canada, find their way on to the jobs.merck.com website:

The case of the MSD Defendants is that the jobs advertised as UK jobs were cross-posted jobs, with the primary location in the US.

Mr Domingo also describes, at paragraphs 15 and 16 of Domingo 1, the disclaimers which appeared on this website:

At paragraph 25 of Domingo 1, Mr Domingo explains that a pop-up was subsequently added to the website, which went live on 28^th October 2021, for users who access the website via a UK IP address. The Claimant says that there is also now geo-blocking of this website to prevent UK residents finding UK jobs on a Merck branded website. The pop-up is in the following terms:

I should also mention the evidence of Johanna Herrmann, mentioned above as Head of Corporate Communications at the First Defendant. In Herrmann 2, Ms Herrmann addresses matters raised by the Part 18 Requests. In paragraph 16 of Herrmann 2, Ms Herrmann makes the following counter-accusation against the Claimant:

It seems to me that the advertising of jobs in the UK on the Merck branded website was a breach of Paragraph 2. I accept the submission of the Claimant that, at the time when the screenshots were taken, the reality was that a person searching for Merck jobs in the UK would have found the jobs.merck.com website and read what was on offer. I do not think that the disclaimer on the website was sufficient to avoid this effect. Although I accept that the jobs advertised in the UK were cross-posted jobs, I do not see how it can be said that the advertising of jobs on the website which were described as being located in the UK can be said not to have been targeted at potential employees in the UK. As such, it seems to me that there was use of Merck within the UK, within the meaning of Paragraph 2.

As I understand the position, this problem has now been resolved by the geo-blocking measures taken by the Defendants, but this does not avoid the fact that there was in my view, on the evidence and applying the relevant principles of law, a breach of Paragraph 2. So far as the counter-accusation against the Claimant is concerned, that is not before me for decision and I do not think that it is relevant to my decision on whether the First Defendant has breached Paragraph 2.

This leaves Row HH. The complaint in Row HH relates to a chatbot which was made available by Merck US as an automatic pop-up on the jobs.merck.com website. The chatbot was headed with a Merck branded logo. In response to an inquiry from someone describing themselves as located in the UK and interested in jobs in the EMEA (Europe, Middle-East and Africa) region, the chatbot presented information about jobs in the UK. A user could then engage further to pursue an interest in the relevant role. Details of the complaint are set out in Day 2, at paragraphs 211-216. The relevant screenshots exhibited to Day 2 were taken on 12^th November 2021.

The Claimant says that this use of the Merck branded chatbot constituted a breach of Paragraph 2. The Paragraph 2 column in the Table shows a dispute for this Row. The MSD Defendants deny that there was use in the UK within the meaning of Paragraph 2. Breach of Paragraph 3 is not alleged in relation to Row HH.

The response of the MSD Defendants to this complaint follows a similar line to the response to Row P. The MSD Defendants point out that the job advertisements which were generated by interaction with the chatbot were for cross-posted jobs; see the relevant screenshots exhibited in MCJD-13. In paragraphs 24 and 26 of Domingo 1, Mr Domingo says this:

As I understand the position, the Defendants have now introduced geo-blocking in relation to the jobs.merck.com website; see my reference to geo-blocking in relation to Row P.

My reasoning in relation to Row HH is the same as my reasoning in relation to Row P. It seems to me that the functioning of the chatbot did constitute use of Merck within the UK, within the meaning of Paragraph 2, for essentially the same reasons as I have given in relation to Row P. On the evidence, and applying the relevant principles of law, I conclude that there was a breach of Paragraph 2.

I therefore conclude that the Claimant has established that the First Defendant breached the Order, in the manner set out in Rows P and HH. I find and conclude that the First Defendant has, by reason of the matters set out in Rows P and HH, breached Paragraph 2.

Row Q is concerned with safety data sheets. The complaint is that the safety data sheets (“SDS”) for products intended to be available to people throughout the world were compiled together and only accessible at the Merck Website. Anyone wishing to view the SDS had therefore to access this website, with its extensive Merck branding, including Merck branding in relation to the SDS themselves. SDS for multiple countries, including the UK, were available to download for each product. In the case of the UK the SDS were made available by a download symbol at a link which read “United Kingdom – English”. Details of the complaint are set out in Day 2, at paragraphs 88-92. The screenshots exhibited to Day 2 were taken on 14^th October 2021.

The Claimant says that the use of Merck in the domain name, and on the website on which UK specific SDS for MSD products were hosted constituted breaches of Paragraph 2 and breaches of Paragraph 3 by the First Defendant. The Paragraph 2 column in the Table shows a dispute for this Row. The MSD Defendants deny that there was use in the UK, within the meaning of Paragraph 2. The MSD Defendants also deny that there was a breach of Paragraph 3 on the basis that there was no use of Merck as a trade mark in the course of trade in the UK for the purposes of Paragraph 3. The MSD Defendants do not seek to rely on Sub-paragraph (h).

The provenance of hosting the SDS on a central external resource is explained by Donna Basile, formerly the First Defendant’s Director, Global Safety & Environment, in Basile 1 at paragraph 11:

Ms Basile then continues in the following terms, at paragraphs 12-17:

In Basile 2, at paragraph 11, Ms Basile asserts that the SDS on the Merck Website were always intended to be a resource for US users. As she explains, at paragraphs 11 and 12, in response to the relevant Part 18 Requests:

In Basile 2, at paragraph 15, Ms Basile goes on to explain that the SDS collection is now made available at the msd.com website. This is explained in more detail in paragraph 10 of Basile 2:

It seems to me that making SDS for the UK available in a Merck branded environment was a breach of Paragraph 2. These SDS were clearly targeted at users in the UK. I note Ms Basile’s evidence that this information was made available for US users who wanted it “out of interest”, but I cannot see how this avoided the fact that the material was clearly targeted at users in the UK. This was the inevitable consequence of UK SDS being included in the Merck Website and of the fact that there was, at the relevant time when the breach occurred, no parallel MSD site on which these SDS could be made available. In my view making these UK SDS available in a Merck branded environment was clearly use within the UK, within the meaning of Paragraph 2. I note that Ms Basile asserts that making these SDS available was not part of the business process of Merck US (paragraph 11 of Basile 2), but I do not accept this. I take the point that making the SDS available was a requirement of US legislation, but I do not think that this has the effect of separating out the provision of the UK SDS from the business of Merck US. In my view the provision of the UK SDS is correctly seen as part of the business of Merck US and as part of the promotion of the business of Merck US to third parties in the UK. On the evidence, and applying the relevant principles of law, I conclude that there was a breach of Paragraph 2.

For much the same reasons it seems to me that the use of Merck in connection with the provision of UK SDS constituted the use of Merck as a trade mark in the course of trade in the UK, for the purposes of Paragraph 3, with the consequence that this use also constituted an infringement of the Claimant’s trade marks and a breach of Paragraph 3. I agree with the Claimant that although the linkage was indirect, there was deliberate linking of the Merck brand with the goods to which the UK SDS applied, sufficient to constitute infringement of the Claimant’s trade marks. On the evidence I am satisfied that the use of Merck in relation to the UK SDS constituted a breach of Paragraph 3.

I therefore conclude that the Claimant has established that the First Defendant breached the Order, in the manner set out in Row Q. I find and conclude that the First Defendant has, by reason of the matters set out in Row Q, breached Paragraph 2 and Paragraph 3.

The complaint in Row S relates to a pdf of a public policy statement which was hosted on the MSD Website, entitled “Conflict Minerals”. The word Merck is used on 11 occasions within this document, as a shorthand for Merck US. Details of the complaint are set out in Day 2, at paragraphs 98-101. The relevant screenshots were taken on 20^th October 2021. The way in which Merck is used in this document is most easily appreciated by my quoting the opening sentence of the document:

The Claimant says that these uses of Merck in the Conflict Minerals document, constituted breaches of Paragraph 2 and breaches of Paragraph 3 by the First Defendant. The Paragraph 2 column in the Table shows no dispute for this Row. The MSD Defendants deny that there was a breach of Paragraph 3, on the basis that there was no use of Merck as a trade mark in the course of trade in the UK. In the case of the alleged breaches of Paragraph 2 and Paragraph 3, the MSD Defendants rely on Sub-paragraph (h).

The evidence in response to this complaint is given by Mr Downie, Director of Compliance at the First Defendant. Mr Downie was responsible for producing the Conflict Minerals policy statement which is the subject of Row S. Mr Downie explains how the Merck references in the document came about in paragraphs 8-12 of Downie 1:

I am satisfied, on the evidence and applying the relevant principles of law, that the uses of Merck in the Conflict Minerals document did constitute breaches of Paragraph 2, if Sub-paragraph (h) is put to one side. I am also satisfied, on the evidence, that these uses of Merck constituted an infringement of the Claimant’s trade marks. The document was available on the MSD Website, and was thus targeted at the UK. The document was intended as a statement of corporate social responsibility in relation to the goods and services provided by Merck US. It seems to me that the Consumer, reading this document, would have assumed that the party identified as Merck was the originator or was associated with the originator of those goods and services in respect of which the statement of corporate responsibility was being made, notwithstanding that the references to Merck appeared in an MSD branded environment. I am therefore satisfied that the use of Merck in the Conflict Minerals document also constituted a breach of Paragraph 3, if Sub-paragraph (h) is put to one side.

This leaves Sub-paragraph (h). Mr Downie does say that the Conflict Minerals Documents was posted to the MSD Website in error. What however Mr Downie does not explain is how this error came about. Mr Downie says that he asked Mr Woodall to post the document to the MSD Website. The last sentence of paragraph 10 of Downie 1 (quoted above) may be thought to mean that the error came about because Mr Downie misunderstood SEC requirements, but this is unclear. What Mr Downie’s evidence does not establish is that the posting to the MSD Website was not intended by Mr Downie. In oral submissions Mr Hollingworth submitted that Mr Downie’s evidence should be taken as meaning that Mr Downie made an accidental error in posting the Conflict Minerals Document to the MSD Website. The posting was not intended. I was not however persuaded by these submissions. My reading of Mr Downie’s evidence is that he did intend to post the document to the MSD Website, and now realises that this was an error. On any view it seems to me that the MSD Defendants have failed to establish that the document was posted on the MSD Website as a result of an inadvertent error. In these circumstances I conclude that Sub-paragraph (h) is not available to the First Defendant.

I therefore conclude that the Claimant has established that the First Defendant breached the Order, in the manner set out in Row S. This is because the First Defendant is unable to rely upon Sub-paragraph (h). In the absence of Sub-paragraph (h), I find and conclude that the First Defendant has, by reason of the matters set out in Row S, breached Paragraphs 2 and 3.

The complaint in Row T relates to a further document hosted on the MSD Website as a pdf. The document in question was described as a public policy statement and was entitled MSD Global Tax Strategy. It contained four references to Merck & Co. Inc., although the statement was branded as an MSD document. Merck & Co. Inc. was identified in the statement as “Our parent company”, holding ultimate responsibility for the tax affairs of “the total company”. There was no geographical indicator against the name of Merck & Co. Inc. in the form prescribed by clause 5 of the 1970 Agreement. Details of the complaint are set out in Day 2, at paragraphs 102-105. The relevant screenshots were taken on 20^th October 2021.

The Claimant says that these uses of Merck in the Global Tax Strategy statement constituted breaches of Paragraph 2. The Paragraph 2 column in the Table shows no dispute for this Row. The MSD Defendants rely upon Sub-paragraph (h). Breach of Paragraph 3 is not alleged in relation to Row T.

The evidence in response to this complaint is given by Mr Henningsen, Vice President of Tax Planning at the First Defendant. In Henningsen 1, at paragraph 5, Mr Henningsen explains that he prepared the statement at the request of the Corporate Responsibility team, in two versions, one for the Merck Website, and one for MSD Website. The MSD version was then sent to the MSD Website to be uploaded.

Mr Henningsen explains what went wrong at paragraphs 7-10 of Henningsen 1, in the following terms:

I am satisfied, on the evidence and applying the relevant principles of law, that the uses of Merck & Co. Inc. in the statement did constitute breaches of Paragraph 2, if Sub-paragraph (h) is put to one side.

I do not think that the First Defendant can rely upon Sub-paragraph (h). As Mr Henningsen explains, this was not a case of accidental oversight. Mr Henningsen’s assumption is that the parent company was included in the statement, without the required geographical indicator, because he overlooked the need to add the address. On the evidence this was not a case where Mr Henningsen knew that the geographical indicator was required, but forgot to include it when making reference to Merck & Co. Inc. As I read Mr Henningsen’s evidence he did not realise and was not aware, at that time, that the geographical indicator was required. In these circumstances it seems to me that the inclusion of Merck & Co. Inc. without the geographical indicator was not the result of inadvertent error. I therefore conclude that the First Defendant cannot rely on Sub-paragraph (h) in relation to Row T.

I therefore conclude that the Claimant has established that the First Defendant breached the Order, in the manner set out in Row T. This is because the First Defendant is unable to rely upon Sub-paragraph (h). In the absence of Sub-paragraph (h), I find and conclude that the First Defendant has, by reason of the matters set out in Row T, breached Paragraph 2.

The complaints in Row V relates to two separate instances where Merck was used on the msd-animal-health.com website (“the MSD Animal Health Website”).

First, a page on the MSD Animal Health Website entitled “High-Quality Pork – Precision Farming Award Submission Information” stated that applications could be sent to an email address which was accessed by clicking on a link. The link opened up an email window with an email address hqporkphdaward@merck.com. Details of the complaint are set out in Day 2, at paragraphs 109-113. The relevant screenshots were taken on 11^th October 2021.

Second, an article was published on the MSD Animal Health Website entitled “MSD Animal Health Announces 2020 High-Quality Pork – Precision Farming Award Recipient”, which included the reference, in the third paragraph of the article, to “Rika Jolie, DVM, Ph.D., MBA, global swine lead, Merck Animal Health”. Details of the complaint are set out in Day 2, at paragraphs 114-116. The relevant screenshots were taken on 20^th October 2021.

The Claimant says that these uses of Merck on the MSD Animal Health Website constituted breaches of Paragraph 2. The Paragraph 2 column in the Table shows no dispute for this Row. The MSD Defendants do however rely on Sub-paragraph (d) and Sub-paragraph (h).

The evidence in response to these complaints is given by Noreen Verbrugge, Vice President of Global Communications: Animal Health at the First Defendant. In Verbrugge 1 Ms Verbrugge explains that she oversaw the content of the MSD Animal Health Website, intended for audiences outside the US and Canada, and the equivalent Merck animal health website, intended for use in the US and Canada. She goes on to explain how the content for each website is prepared.

In paragraph 13 of Verbrugge 1, Ms Verbrugge gives the following explanation as to how the @merck.com email address came to be used in the link from the relevant page of the MSD Animal Health Website:

So far as the description of Ms Jolie’s role on the MSD Animal Health Website is concerned, Ms Verbrugge says this, at paragraphs 14-16:

Starting with Sub-paragraph (d), this is only capable of applying to the first of the complaints in Row V; namely the use of the email address hqporkphdaward@merck.com. This is however another generic email address. Applying my reasoning in relation to Rows K, L, R and U, it seems to me that the First Defendant is not entitled to rely on Sub-paragraph (d) in relation to the use of this email address.

Given my decision that the First Defendant cannot rely on Sub-paragraph (d), in relation to the first of the complaints in Row V, and putting Sub-paragraph (h) to one side, I am satisfied, on the evidence and applying the relevant principles of law, that the uses of Merck on the MSD Animal Health Website which are the subject of Row V did constitute breaches of Paragraph 2.

This leaves Sub-paragraph (h). So far as the use of the generic email address is concerned, the evidence of Ms Verbrugge does not seem to me disclose any inadvertent error in this respect. As I read paragraph 13 of Verbrugge 1, the generic email address was used because it was thought that it could be used. The case was not one of inadvertent error.

In saying this, I have not overlooked what Ms Verbrugge says in paragraph 21, by way of conclusion to Verbrugge 1:

As I read paragraph 21, which follows the specific evidence given by Ms Verbrugge in response to Rows V, W and X, Ms Verbrugge is not expanding upon or qualifying the explanations which she gives in the earlier paragraphs of Verbrugge 1. Ms Verbrugge is simply making a general apology. As such, I do not think that the evidence in paragraph 21 affects my conclusions on the specific evidence given by Ms Verbrugge in response to Rows V, W and X.

Turning to the description of Ms Jolie the position seems to me to be different. According to the evidence of Ms Verbrugge, this was a genuine accident. As I understand this evidence, Ms Jolie’s title was supposed to be updated to “MSD Animal Health”, as her title was being referred to in an MSD document. This was what, apparently, had been done previously. On the evidence it seems to me that this error qualifies as an inadvertent error, on which the First Defendant can rely.

I therefore conclude that the Claimant has established that the First Defendant has breached the Order, so far as the first complaint in Row V (the use of the generic email address) is concerned. This is because the First Defendant is unable to rely upon Sub-paragraph (d) or Sub-paragraph (h). In the absence of Sub-paragraph (d) or Sub-paragraph (h), I find and conclude that the First Defendant has, by reason of the first of the matters set out in Row V, breached Paragraph 2. Turning to the second complaint in Row V I find that this alleged breach of the Order has not been established. This is because the First Defendant is entitled to rely upon Sub-paragraph (h), with the consequence that this second complaint, which would otherwise have constituted a breach of Paragraph 2, is not a breach of Paragraph 2.

This complaint also relates to the MSD Animal Health Website. The complaint is that under the heading “A Legacy of Innovation”, within the “about us” section of the MSD Animal Health Website (dealing with the history of MSD Animal Health), the following two uses of the word Merck appeared:

Details of the complaint are set out in Day 2, at paragraphs 117-119. The relevant screenshot exhibited to Day 2 was taken on 21^st October 2021.

The Claimant says that these uses of Merck constituted breaches of Paragraph 2 and breaches of Paragraph 3 by the First and Fifth Defendants. The Paragraph 2 column in the Table shows no dispute for this Row. The MSD Defendants deny that there was a breach of Paragraph 3, on the basis that there was no use of Merck as a trade mark in the course of trade in the UK for the purposes of Paragraph 3. In the case of the alleged breaches of Paragraphs 2 and 3 the MSD Defendants rely upon Sub-paragraph (h).

The evidence in response to these complaints is again given by Ms Verbrugge. In paragraphs 17-19 of Verbrugge 1 Ms Verbrugge gives the following explanation of how the two references to Merck came to be included within this section of the MSD Animal Health Website:

I am satisfied, on the evidence and applying the relevant principles of law, that the uses of Merck which are complained of in Row V did constitute breaches of Paragraph 2, if Sub-paragraph (h) is put to one side.

I am not satisfied, on the evidence, that these uses of Merck constituted breaches of Paragraph 3, if Sub-paragraph (h) is put to one side. I cannot see that these uses of Merck can properly be characterised as the use of Merck as a trade mark in the course of trade in the UK for the purposes of Paragraph 3. I cannot see the required linkage between these two uses of Merck and the promotion by Merck US of its goods and services. These two uses of Merck appear in an MSD branded environment, which is telling the Consumer about MSD Animal Health. In my view, and applying the reasoning of Sir Alastair in the Remitted Issues Judgment, the Consumer would not read either of these two references to Merck as promoting goods and services offered under the Merck mark.

This leaves Sub-paragraph (h). In relation to the reference to Merck Animal Health, it seems clear to me, on the evidence of Ms Verbrugge, that this was an inadvertent error, which was promptly corrected. In relation to the reference to the Merck Veterinary Manual, the evidence is to the opposite effect. As Ms Verbrugge explains, this error came about because the teams had mistakenly understood that this was permissible. As I have previously explained, I do not think that an error of this kind qualifies as an inadvertent error. I therefore conclude that the First Defendant can rely on Sub-paragraph (h) in relation to the first of the two complaints in Row W, but not in relation to the second complaint. The position would be the same for the Fifth Defendant, if I had decided that, putting Sub-paragraph (h) to one side, the First and Fifth Defendants were in breach of Paragraph 3.

I therefore conclude that the Claimant has established that the First Defendant has breached the Order, so far as the second complaint in Row W (the reference to “The Merck Veterinary Manual”) is concerned. This is because the First Defendant is unable to rely upon Sub-paragraph (h) in this respect. In the absence of Sub-paragraph (h), I find and conclude that the First Defendant has, by reason of the second of the matters set out in Row W, breached Paragraph 2. So far as Paragraph 3 is concerned, and if Sub-paragraph (h) is put to one side, the Claimant has failed to establish that the second complaint in Row W constituted a breach of Paragraph 3. It follows, so far as Paragraph 3 is concerned, that it does not matter that the First and Fifth Defendants were not able to rely on Sub-paragraph (h) in relation to the second complaint.

Turning to the first complaint in Row W (the reference to “Merck Animal Health”) I find that this alleged breach of the Order has not been established. So far as Paragraph 2 is concerned, this is because the First Defendant is entitled to rely upon Sub-paragraph (h), with the consequence that this first complaint, which would otherwise have constituted a breach of Paragraph 2, is not a breach of Paragraph 2. So far as Paragraph 3 is concerned, this is because I have concluded that the alleged breach of Paragraph 3 has not been established, independent of Sub-paragraph (h). If breach of Paragraph 3 had been established, independent of Sub-paragraph (h), the First and Fifth Defendants would have been able to rely on Sub-paragraph (h) to avoid the breach, in relation to the first complaint in Row W.

This complaint also relates to the MSD Animal Health Website. The complaint is that the MSD Animal Health Website hosted a pdf entitled “MSD Animal Health Statement on SEQUIVITY Technology” and dated September 2020, which included the use of Merck in the following statement on page 3 of the pdf document:

Details of the complaint are set out in Day 2, at paragraphs 120-123. The relevant screenshots exhibited to Day 2 were taken on 11^th October 2021.

The Claimant says that this use of Merck constituted a breach of Paragraph 2 and a breach of Paragraph 3 by the First and Fifth Defendants. The Paragraph 2 column in the Table shows no dispute for this Row. The MSD Defendants deny that there was a breach of Paragraph 3, on the basis that there was no use of Merck as a trade mark in the course of trade in the UK for the purposes of Paragraph 3. In the case of Paragraphs 2 and 3 the MSD Defendants rely upon Sub-paragraph (h).

The evidence in response to these complaints is again given by Ms Verbrugge. In paragraph 20 of Verbrugge 1, Ms Verbrugge gives the following explanation of how the reference to Merck Animal Health came to be included within the pdf document:

I am satisfied, on the evidence and applying the relevant principles of law, that the use of Merck which is complained of in Row X did constitute a breach of Paragraph 2, if Sub-paragraph (h) is put to one side.

I am not satisfied, on the evidence, that this use of Merck constituted a breach of Paragraph 3, if Sub-paragraph (h) is put to one side. My reasoning is essentially the same as my reasoning on this question in relation to Row W. This was a single reference to Merck in an MSD branded environment. It is the case that the reference to Merck Animal Health was made on the context of a document extolling the benefits of “SEQUIVITY” as a vaccine production platform, but the reference to Merck Animal Health appeared under the heading “MSD Animal Health Statement on SEQUIVITY Technology”, and by way of a link from an MSD branded website. In my view, and again applying the reasoning of Sir Alastair in the Remitted Issues Judgment, the Consumer would not read the reference to Merck Animal Health as promoting goods and services offered under the Merck mark.

This leaves Sub-paragraph (h). The evidence of Ms Verbrugge is that this was an adaptation error. The text was supposed to be adapted with MSD branding only but, by reason of oversight, the reference to Merck Animal Health escaped the net. It seems to me that this was an inadvertent error, which was promptly corrected. I therefore conclude that the First Defendant can rely on Sub-paragraph (h) in relation to the complaint in Row X. The position would be the same for the Fifth Defendant, if I had decided that, putting Sub-paragraph (h) to one side, the First and Fifth Defendants were in breach of Paragraph 3.

I therefore conclude that the breaches of the Order alleged in Row X have not been established. So far as Paragraph 2 is concerned, this is because the First Defendant is entitled to rely upon Sub-paragraph (h), with the consequence that the complaint in Row X, which would otherwise have constituted a breach of Paragraph 2, is not a breach of Paragraph 2. So far as Paragraph 3 is concerned, this is because I have concluded that the alleged breach of Paragraph 3 has not been established, independent of Sub-paragraph (h). If breach of Paragraph 3 had been established, independent of Sub-paragraph (h), the First and Fifth Defendants would have been able to rely on Sub-paragraph (h) to avoid the breach.

This complaint relates to the msdmanuals.com website. The complaint concerns articles which were made available on two parts of this website (“the MSD Manuals Website”). The articles were made available in a professional version and, separately, in a consumer version. Each article was introduced, in the relevant part of the MSD Manuals Website, as an article written “By Roger I. Schreck “MD, Merck Manual”. Sixteen articles are identified in Row Y; eight in the professional version and eight in the consumer version. Details of the complaint are set out in Day 2, at paragraphs 120-130. The relevant screenshots exhibited to Day 2 were taken on 15^th October 2021, with the exception of one article, in respect of which the relevant screenshot was taken on 18^th October 2021. The sixteen articles are said, in the Claimant’s skeleton argument, to be examples, but this is not apparent from Mr Day’s evidence. In any event, I can only analyse the breaches of the Order alleged in Row Y by reference to the articles in evidence.

The Claimant says that these uses of Merck, in the identification of Roger Schreck as the author of the articles, constituted breaches of Paragraph 2 and breaches of Paragraph 3 by the First Defendant. The Paragraph 2 column in the Table shows a dispute for this Row. The MSD Defendants deny that there was use of Merck in the UK within the meaning of Paragraph 2. The MSD Defendants also deny that there was a breach of Paragraph 3, on the basis that there was no use of Merck as a trade mark in the course of trade in the UK for the purposes of Paragraph 3. In the case of the alleged breaches of Paragraphs 2 and 3 the MSD Defendants rely upon Sub-paragraph (h).

The evidence in response to these complaints is given by Mr DeFerrari, Director of Merck Digital Publications of the First Defendant. In paragraphs 6-16 of DeFerrari 3, Mr DeFerrari explains the purpose and function of what he refers to as “the Manuals” (including veterinary manuals) which Merck US makes available to professionals and consumers. Mr DeFerrari explains that the Manuals (which I take to include articles of the kind complained of in Row Y) are made available on a Merck manuals website for users in the US and Canada, and on the MSD Manuals Website for users outside the US and Canada. Equivalent websites exist for the Merck veterinary manuals. Given that the complaints in Row Y relate to articles, I will refer to articles rather than manuals in the remainder of my analysis of Row Y. In paragraphs 7 and 8 of De Ferrari 3, Mr DeFerrari explains the particular status of the articles in the following terms:

In terms of the complaint in Row Y Mr DeFerrari gives the following explanation of what occurred, at paragraphs 17-19 of DeFerrari 3:

Starting with Paragraph 2, and putting Sub-paragraph (h) to one side, I am satisfied, on the evidence and applying the relevant principles of law, that the identification of Mr Schreck as MD, Merck Manual, in the heading to each of the articles, constituted breaches of Paragraph 2. As I understand the argument of the MSD Defendants in this context, it is that the articles were made available as a free service, and did not promote the business of the First Defendant; see DeFerrari 3 at paragraphs 7 and 8. I do not accept this argument, for two reasons.

First, I cannot accept that the provision of the articles as a free service, however commendable, has nothing to do with the promotion of the First Defendant’s business. It plainly does, given that the articles are made available in MSD and Merck branded environments, as part of what Merck US provides under these brandings. Indeed, I note from the screenshots which I have seen that the branding of the MSD articles includes the expression “The trusted provider of medical information since 1899”. It is quite clear that a purpose of the provision of the articles is to promote the business of Merck US, through the MSD and Merck brands. I stress that this is not a question of rejecting the factual evidence given by Mr DeFerrari. It is simply a question of applying the wording of Paragraph 2 to the provision of the articles, as described by Mr DeFerrari and as can be seen from the relevant screenshots exhibited at MCJD-08.

Second, I note that the use of Merck in connection with the articles has already been the subject of reference in the Action; see the First Judgment at [127], the CA Judgment at [222] and the Remitted Issues Judgment at [57]. In particular, at [57] in the Remitted Issues Judgment, Sir Alastair made the following point about the service constituted by the provision of the articles:

This appears to me to confirm my own conclusion that the provision of the articles is correctly seen as having a commercial purpose and that Merck is being used in the course of a commercial activity promoting the business of the First Defendant in the UK.

A point was also made by the MSD Defendants, in relation to Rows Y, AA and BB, that the Claimant made no objection to the Merck manuals when they existed in hard copy. I do not see the relevance of this point. I can see that the point might have been relevant, if it was said that the Claimant had, in some way, lost its right to complain of the materials relied upon in these Rows, but I did not understand this point to be relied upon in support of such an argument.

I am not satisfied, on the evidence, that this use of Merck constituted a breach of Paragraph 3, if Sub-paragraph (h) is put to one side. It is true that the reference to the “Merck Manual” in the description of Mr Schreck can be taken as associating Merck with the originator of the articles. It is also true that this use of Merck in the provision of the articles can be seen as part of the commercial activity of Merck US in the UK; see in particular the Remitted Issues Judgment at [57]. I note however, from the evidence of the relevant screenshots, that the articles were made available on the MSD Manuals Website as “MSD” manuals. This information was prominently displayed on the heading to each web page. The reference to Merck Manual appeared therefore in an MSD branded environment. This appears to me to be an important point of difference, when one is considering the analysis by Sir Alastair of references to Merck Manual at [54]-[58] in the Remitted Issues Judgment. In my view the Consumer would not read the reference to Merck Manual, in the biographical information about Mr Schreck, as promoting goods and services offered under the Merck mark.

This leaves Sub-paragraph (h). The evidence of Mr DeFerrari explains how this error came about. The error was clearly a major one, because the error in the Portuguese translation infected the biographical information for all the different language versions, including the English version of the MSD Manuals Website. This however does not seem to me to alter the fact that the error was accidental. The correction from Merck to MSD did not reach the Portuguese version, because the Portuguese version was delayed. Clearly, it would have been better if the error had not occurred. It seems to me however that the error did qualify as an inadvertent error, which was promptly corrected. I therefore conclude that the First Defendant can rely on Sub-paragraph (h) in relation to the complaints in Row Y, so far as the First Defendant needs to do so.

I therefore conclude that the breaches of the Order alleged in Row Y have not been established. So far as Paragraph 2 is concerned, this is because the First Defendant is entitled to rely upon Sub-paragraph (h), with the consequence that the matters complained of in Row Y, which would otherwise have constituted breaches of Paragraph 2, were not breaches of Paragraph 2. So far as Paragraph 3 is concerned, this is because I have concluded that the alleged breaches of Paragraph 3 have not been established, independent of Sub-paragraph (h). If the alleged breaches of Paragraph 3 had been established, independent of Sub-paragraph (h), the First Defendant would have been able to rely on Sub-paragraph (h) to avoid these breaches.

These complaints also relate to the MSD Manuals Website. The complaints are that various articles published on the professional and consumer versions of the MSD Manuals Website included use of the word Merck within the text of these articles. Eight articles are identified in Row AA. Details of the complaint are set out in Day 2, at paragraphs 131-136. The relevant screenshots exhibited to Day 2 were taken on 15^th October 2021, with the exception of one article of which the screenshot was taken on 18^th October 2021. Once again, the eight articles are said, in the Claimant’s skeleton argument, to be examples. I note that Mr Day refers to the uses of Merck which are complained of in Row AA as “including” the eight specified articles; see paragraph 131 of Day 2. Once again however, I can only analyse the breaches of the Order alleged in Row AA by reference to the articles in evidence.

The Claimant says that these uses of Merck constituted breaches of Paragraph 2 and breaches of Paragraph 3 by the First Defendant. The Paragraph 2 column in the Table shows a dispute for this Row. The MSD Defendants deny that there was use of Merck in the UK within the meaning of Paragraph 2. The MSD Defendants also deny that there was a breach of Paragraph 3, on the basis that there was no use of Merck as a trade mark in the course of trade in the UK for the purposes of Paragraph 3. Row AA is also one of only two Rows where the MSD Defendants contend that the relevant use of Merck was not their use. Finally, in the case of the alleged breaches of Paragraphs 2 and 3 the MSD Defendants rely upon Sub-paragraph (h).

The evidence in response to these complaints is again given by Mr DeFerrari. In paragraph 20 of DeFerrari 3, Mr DeFerrari explains the provenance of the articles which appear on the MSD Manuals Website and the equivalent Merck website:

In terms of how references to Merck came to be in these articles, Mr DeFerrari gives the following explanation, at paragraphs 21-24 of DeFerrari 3:

I do not entirely follow this evidence. In their written submissions the MSD Defendants have asserted that all the specified articles came from the RSS feed, and that the references to Merck in most of the articles had been identified and corrected before the Claimant’s complaint. I have some difficulty in confirming these assertions in the evidence of Mr DeFerrari which I have quoted above. The evidence seems to me to be rather more opaque than this.

I again start with Paragraph 2, putting Sub-paragraph (h) to one side. I am satisfied, on the evidence and applying the relevant principles of law, that the references to Merck which appeared in the specified articles did constitute breaches of Paragraph 2. I have already dealt with the argument that the provision of the articles did not constitute promotion of the First Defendant’s business in the UK. I do not accept this argument, for the reasons which I have set out in my analysis of Row Y. This leaves the argument of the MSD Defendants, as I understand the issues in relation to Paragraph 2 in this context, that the use of Merck was not use by the MSD Defendants, because the use of Merck appeared in articles provided by third parties. I do not accept this argument. The articles were published by Merck US on its MSD Manuals Website. I have already found that the articles were published with a commercial purpose. They were clearly targeted at the UK, as they were published on an MSD website. It does not seem to me to be right that the MSD Defendants can, as it were, wash their hands of content on their websites, simply because the content in question was provided by a third party. Once the material is published on a Merck US website, it seems to me that Merck US becomes responsible for that material, at least so far as Paragraphs 2 and 3 are concerned.

Turning to Paragraph 3, I am not satisfied, on the evidence, that the appearance of isolated references to Merck in the specified articles constituted breaches of Paragraph 3, if Sub-paragraph (h) is put to one side. My reasons for this conclusion are essentially the same as the reasons I have set out in my analysis of Row Y. It is true, looking at the screenshots exhibited to Day 2 in MJCD-08, that some of the references to Merck identify Merck as the party responsible for producing products, but in each case the reference is contained in an article published on an MSD branded website.

This leaves Sub-paragraph (h). In the case of Sub-paragraph (h) it seems to me that there is an important distinction between the evidence given by Mr DeFerrari in relation to Row Y and the evidence given in relation to Row AA. In relation to Row Y it is clear that there was a system in place for removing references to Merck from Mr Schreck’s articles, which failed to pick up the error in the Portuguese version of the MSD Manuals Website, which then proceeded to infect all the other versions. In relation to Row AA it is not easy to understand what Mr DeFerrari is saying. My understanding of his evidence is that the specified articles came from a third party or third parties, which he and his team did not commission or control. Mr DeFerrari does make reference to a regular scan, but I find the evidence opaque on what this was, or how it worked. What is clear is that the procedures previously in place, such as they may have been, did not amount to the automatic and manual checking systems referred to by Mr DeFerrari in paragraph 24 of DeFerrari 3. In these circumstances I am not satisfied that the MSD Defendants have demonstrated that the references to Merck in the specified articles were the consequences of inadvertent error or inadvertent errors. I therefore conclude that the First Defendant is not entitled to rely on Sub-paragraph (h) in relation to the complaints in Row AA.

I therefore conclude that the breaches of the Order alleged in Row AA have been established in part. I find and conclude that the First Defendant has, by reason of the matters set out in Row AA, breached Paragraph 2. So far as Paragraph 3 is concerned, I conclude that the breaches of the Order alleged in Row AA have not been established. This is because I have concluded that the alleged breaches of Paragraph 3 have not been established, independent of Sub-paragraph (h). If the alleged breaches of Paragraph 3 had been established, independent of Sub-paragraph (h), the First Defendant would not have been able to rely on Sub-paragraph (h) to avoid these breaches.

These complaints relate to a video directed to the treatment of pets, which was posted on the msdvetmanual.com website. The video is described in the following terms:

Within the video itself Dr Quesenberry is described as “Editorial Board Member for the Merck Veterinary Manual 11^th Edition and MSD Veterinary Website”.

Details of these complaints are set out in Day 2, at paragraphs 137-140. The relevant screenshots exhibited to Day 2 (including of the video as it then appeared) were taken on 18^th October 2021.

The Claimant says that these uses of Merck constituted breaches of Paragraph 2 and breaches of Paragraph 3 by the First Defendant. The Paragraph 2 column in the Table shows a dispute for this Row. The MSD Defendants deny that there was use of Merck in the UK within the meaning of Paragraph 2. The MSD Defendants also deny that there was a breach of Paragraph 3, on the basis that there was no use of Merck as a trade mark in the course of trade in the UK for the purposes of Paragraph 3. In the case of the alleged breaches of Paragraphs 2 and 3 the MSD Defendants rely upon Sub-paragraph (h).

The evidence in response to these complaints is again given by Mr DeFerrari. At paragraphs 25-27 of DeFerrari 3, Mr DeFerrari says this:

I again start with Paragraph 2, putting Sub-paragraph (h) to one side. I am satisfied, on the evidence and applying the relevant principles of law, that the references to Merck which appeared in relation to the video did constitute breaches of Paragraph 2. My reasons for saying that are essentially the same as the reasons I have relied upon in my analysis of this question in relation to Row Y.

Turning to Paragraph 3, I am not satisfied, on the evidence, that the appearance of isolated references to Merck in relation to the video constituted breaches of Paragraph 3, if Sub-paragraph (h) is put to one side. My reasons for this conclusion are essentially the same as the reasons I have set out in my analysis of Row Y.

This leaves Sub-paragraph (h). In this case, on the evidence of Mr DeFerrari, I cannot see that Sub-paragraph (h) is available to the First Defendant. Mr DeFerrari does not say that the description of Dr Quesenberry was an accident. Rather, this was how Mr DeFerrari and his team chose to describe Dr Quesenberry. In these circumstances I cannot see that the reference to Dr Quesenberry was the result of an inadvertent error. I therefore conclude that the First Defendant is not entitled to rely on Sub-paragraph (h) in relation to the complaints in Row BB.

I therefore conclude that the breaches of the Order alleged in Row BB have been established in part. I find and conclude that the First Defendant has, by reason of the matters set out in Row BB, breached Paragraph 2. So far as Paragraph 3 is concerned, I conclude that the breaches of the Order alleged in Row BB have not been established. This is because I have concluded that the alleged breaches of Paragraph 3 have not been established, independent of Sub-paragraph (h). If the alleged breaches of Paragraph 3 had been established, independent of Sub-paragraph (h), the First Defendant would not have been able to rely on Sub-paragraph (h) to avoid these breaches.

This complaint relates to the use of Merck in the text of a video, labelled a B-Roll package. The video was made available on the media library page of the MSD Website entitled “The latest on our COVID-19 antiviral efforts”. The page included multimedia resources (photographs and videos) relating to molnupiravir.

A video labelled “B-Roll Package” was available for download. The title of the video, displayed at its start, was “MSD” and, below that, “Molnupiravir B-Roll Video Package”. The following use of Merck was then included in the first few seconds of this video:

Details of the complaints are set out in Day 2, at paragraphs 144-148. The relevant screenshots exhibited to Day 2 (including of the relevant part of the video as it then appeared) were taken on 5^th November 2021.

The Claimant says that this use of Merck constituted a breach of Paragraph 2. The Paragraph 2 column in the Table shows no dispute for this Row. The MSD Defendants rely upon Sub-paragraph (h). Breach of Paragraph 3 is not alleged in the case of Row DD.

The evidence in response to this complaint is given by Ms Melvin. At paragraphs 18-22 of Melvin 1, Ms Melvin gives the following explanation of what occurred:

This evidence follows the opening part of the evidence in Melvin 1, at paragraphs 6-17, in which Ms Melvin explains the role of her team and the procedure for uploading material to the MSD Website and the parallel Merck Website.

If Sub-paragraph (h) is put to one side, I am satisfied, on the evidence and applying the relevant principles of law, that the reference to Merck which appeared in the video did constitute a breach of Paragraph 2. The video was posted on the MSD Website, and thus targeted at the UK. The video was promoting the business of the First Defendant. The use of Merck did not fall within any of the permitted terms of description in Sub-paragraph (a).

This leaves Sub-paragraph (h). The problem for the MSD Defendants in this context is that I find the evidence of Ms Melvin, in paragraphs 18-22 of Melvin 1, somewhat opaque. Ms Melvin is not specific in her evidence as to how the error came about. It appears that her team did not check the relevant video; see paragraph 20 of Melvin 1. There is reference to a review process in this paragraph, but it is not clear what it was or whether it was supposed to catch a reference to Merck of the kind which is the subject of the complaint in Row DD. This lack of clarity in the explanation for how the reference to Merck came to be in the video is not dispelled by the earlier part of Ms Melvin’s evidence in Melvin 1. In my view the MSD Defendants have failed to establish that the reference to Merck in the video was the result of an inadvertent error. I therefore conclude that the First Defendant is not entitled to rely on Sub-paragraph (h) in relation to the complaint in Row DD.

I therefore conclude that the breach of the Order alleged in Row DD has been established. I find and conclude that the First Defendant has, by reason of the matters set out in Row DD, breached Paragraph 2.

These complaints relate to company statement links from the MSD Website to news releases/company statements hosted on the Merck Website. The matters relied upon are more complicated to set out than in relation to other Rows. Details of the complaints are set out in Day 2, at paragraphs 149-164. As I understand Mr Day’s evidence, and the relevant screenshots exhibited to MSD, the essence of the complaints is that if a user followed the company statement links on the MSD Website, the user would end up, through a series of links, at news releases/company statements hosted on the Merck Website. The expressions “news release” and “company statement” appear to be used somewhat interchangeably in Mr Day’s evidence and in the evidence of some other witnesses. By reference to other evidence I have seen, I believe that there is a difference between news releases and company statements, but for the purposes of my analysis of Row EE the distinction (such as it may be) does not appear to be material. All the news releases/company statements were concerned with molnupiravir, the investigational antiviral medicine which was developed during the pandemic to treat viral infection.

In Day 2, at paragraph 150, Mr Day refers to four of these news releases, which appeared on 23^rd December 2021, 24^th December 2021, 18^th January 2022 and 28^th January 2022. The relevant screenshots exhibited to Day 2 were taken on 4^th January 2022, 20^th January 2022 and 31^st January 2022. Looking at the evidence of the screenshots it appears that the route taken by the user was not identical, in relation to each of these news releases. If however I take the first of these news releases, dated 23^rd December 2021 and entitled “Merck and Ridgeback’s Molnupiravir Receives U.S. FDA Emergency Use Authorization for the Treatment of High-Risk Adults With Mild to Moderate COVID-19”, the route took what I understand to have been the following form.

The starting point for a user was the MSD Website. The title “Company statement” appeared on the MSD Website, but the company statement was not itself hosted on the MSD Website. Instead, if one clicked on the title “Company statement”, this took one to a page on the MSD Website with an invitation to “Click here to read the news release”.

Clicking “here” produced a pop-up, with the option to cancel or continue, which read as follows:

If the user took the option of continuing, the user would be taken to the Merck Website, on which a pop-up appeared in the following terms, with an option to continue:

If the user again took the option of continuing, the user would be taken to the actual news release referred to on the MSD Website; that is to say the news release dated 23^rd December 2021 and entitled “Merck and Ridgeback’s Molnupiravir Receives U.S. FDA Emergency Use Authorization for the Treatment of High-Risk Adults With Mild to Moderate COVID-19”.

In the case of the second, third and fourth news releases referred to by Mr Day, my understanding, from Mr Day’s evidence and the exhibited screenshots, is that the route taken by the user was slightly different. In the case of these news releases, it was only the first of the above pop-ups which appeared, in the user’s journey from the MSD Website to the relevant news release on the Merck Website.

In addition to this, Mr Day also makes reference to a further company statement which was identified on the MSD Website. The company statement was entitled “MSD and Ridgeback Statement on Clinical Trial of Hetero’s Generic Molnupiravir”. In order to read this statement it was necessary to click on a link which provided a route to the Merck Website, where the company statement could be read. The relevant screenshots exhibited to Day 2 were taken on 25^th February 2022. The user’s journey from the company statement link, on the MSD Website, to the actual statement, on the Merck Website, took the user through the same two pop-ups (set out above) which were screenshotted in relation to the first of the news releases dated 23^rd December 2021.

Both the news releases and the company statement, in their location on the Merck Website, contained extensive use of Merck and were presented in a Merck branded environment.

The Claimant says that these news releases/company statements, as linked from the MSD Website, constituted breaches of Paragraph 2 and breaches of Paragraph 3 by the First Defendant and the Second Defendant. The Paragraph 2 column in the Table shows a dispute for this Row. The MSD Defendants deny that there was use in the UK, within the meaning of Paragraph 2. The MSD Defendants deny that there was a breach of Paragraph 3, on the basis that there was no use of Merck as a trade mark in the course of trade in the UK. In the case of Paragraphs 2 and 3, the MSD Defendants rely upon Sub-paragraph (b). The MSD Defendants do not rely upon Sub-paragraph (h).

It may be helpful to set out Sub-paragraph (b) once more, as it has not so far featured in my analysis of the Rows:

The evidence in response to this complaint is given by Ms Ronaldo and Ms Choi. In Ronaldo 1, Ms Ronaldo gives a lengthy explanation of the procedures involved in the publication of news releases and company statements. In Choi 1, Ms Choi also gives general evidence concerning the preparation and publication of news releases and company statements. Ms Choi also addresses Row EE directly, at paragraphs 17 and 18 of Choi 1:

I can omit paragraph 19 of Choi 1, which deals with the pop-ups which I have already quoted. At paragraph 20, Ms Choi concludes her evidence specific to Row EE in the following terms:

I start with the question of whether the MSD Defendants can rely on Sub-paragraph (b). Sub-paragraph (b) is narrowly confined. It provides that there is no breach of Paragraph 2 or Paragraph 3 where the Defendants maintain ““MSD branded” UK-specific websites” with links to merck.com websites, provided that the use of the relevant link generates the prescribed form of pop-up. In terms of the background to Sub-paragraph (b), counsel for the MSD Defendants have drawn my attention to the Remitted Issues Judgment, specifically at [114]-[117], [119] and [134(vi)]. Also relevant in this context is the Form of Order Judgment, at [8]. It is useful to have the reasoning of Sir Alastair in mind in construing Sub-paragraph (b), but it is the actual wording of Sub-paragraph (b) which has to be applied.

The wording of Sub-paragraph (b) applies to MSD branded, UK-specific websites. As I understand the evidence of the MSD Defendants, the MSD Website is not UK-specific. Rather, it is targeted at all parts of the world, including the UK, outside the Permitted Territories. In these circumstances I do not see how the links from the MSD Website which are the subject of the complaints in Row EE can fall within the terms of Sub-paragraph (b). The MSD Website was not, and is not UK-specific. The MSD Website can be said to be targeted at the UK, in the sense that the UK is part of the area of the world at which the MSD Website is targeted. It seems to me however that this is not the same thing as saying that the MSD Website is UK-specific. On the evidence, it quite clearly is not UK-specific.

The MSD Defendants seek to argue that the wording “UK-specific websites” in Sub-paragraph (b) reflects the fact that only UK-specific websites fall within the injunctions in Paragraphs 2 and 3 in the first place. If a website is not sufficiently UK-specific, there cannot be use of its content in the UK, so that the website content will not be caught by Paragraph 2 or Paragraph 3 in any event. I do not accept this argument, either in the context of Row EE or in the context of any other Row. It seems to me that the argument proceeds on a false premise. In my view content on an MSD website is perfectly capable of use within the UK, for the purposes of Paragraph 2 and Paragraph 3, notwithstanding that such content is not exclusively targeted at the UK. The argument seems to me to assume an exclusivity in targeting which is not required by either Paragraph.

I therefore conclude that the MSD Defendants cannot rely on Sub-paragraph (b).

This leaves the general question of whether the use of the links from the MSD Website to Merck branded material on the Merck Website constituted breaches of Paragraph 2. In this context it is of course open to the MSD Defendants to rely upon the pop-ups quoted above, in support of their argument that the Merck branded material on the Merck Website was not targeted at the UK by reason of the links from the MSD Website. The fact that Sub-paragraph (b) is not available, as I have decided, does not mean that the MSD Defendants cannot rely on the pop-ups in support of their argument that the Merck branded material on the Merck Website was not being used in the UK to promote the First Defendant’s business.

In my view the pop-ups were insufficient to avoid the Merck branded material being targeted at the UK. I say this for two reasons.

First, the evidence of Ms Ronaldo and Ms Choi is particularly important in this context. It is clear from this evidence that the placing of the relevant news releases/company statements only on the Merck Website was a matter of deliberate policy. It was not an accident. Nor was it an accident that the MSD Website contained links to this material. If a user on the MSD Website wanted to read these materials, a route was provided to the Merck Website by the links referred to in the evidence of Mr Day. On the evidence of Mr Ronaldo and Ms Choi this was intentional. The news releases/company statements were made available to users of the MSD Website by link to the Merck Website. The news releases/company statements were produced for the purposes of promoting the First Defendant’s business to third parties. Those third parties included users in the UK, because the MSD Website was intended to be viewed by users in all parts of the world outside the Permitted Territories, and the MSD Website was intended to provide the required link to the Merck Website, for a user wanting to read the news releases/company statements. I cannot see that the pop-ups have any effect on this analysis. If a user from the UK, searching the MSD Website, wanted to read the news releases/company statements, that user had to follow the links and was intended to follow the links. The pop-ups provided the user with information about where the user was going, but the user had to keep going to read the relevant material.

Second, this issue appears to have been one addressed by Kitchin LJ in the CA Judgment. In the section of the CA Judgment concerned with the issue of targeting. Kitchin LJ started by summarising the reasoning of Norris J in the First Judgment. As part of this summary, at [187] and [188], Kitchin LJ recorded the following reasoning of Norris J:

Kitchin LJ then went to approve this reasoning. It seems to me that the reasoning of Norris J and the reasoning of Kitchin LJ both support the conclusion that, on the basis of the relevant evidence, the use of the pop-ups quoted above could not, and did not avoid the news releases/company statements on the Merck Website being targeted at the UK through the links available on the MSD Website. I should add that it seems to me that there is nothing in the Joint Judgment, in Lifestyle Equities, which contradicts or undermines this analysis, which I have conducted by reference to the overall effect of the online materials which are described in the evidence relevant to this Row.

I therefore conclude, on the evidence and applying the relevant principles of law, that the MSD Defendants cannot rely on the pop ups to argue that the First Defendant was not using, in the UK, the news releases/company statements made available through the links on the MSD Website, as part of the promotion of its business to third parties.

With the arguments based on the pop-ups dealt with, and given that Sub-paragraph (h) is not relied upon, I cannot see any other ground on which the First Defendant can deny breach of Paragraph 2. I am satisfied, on the evidence and applying the relevant principles of law, that the uses of Merck set out in Row EE, through the links provided on the MSD Website, did constitute breaches of Paragraph 2.

So far as Paragraph 3 is concerned, the position seems to me to follow from my analysis set out above. The evidence of the screenshots exhibited to Day 2 demonstrates that the news releases/company statements were heavily Merck branded. Merck was repeatedly used as a trade mark in that branding. The news releases/company statements were published as part of the promotion by Merck US of its goods and services and, by virtue of the links provided from the MSD Website, were published in the course of trade in the UK. From the perspective of the Consumer, it seems to me that the news releases/company statements were clearly targeted at consumers in the UK. The Consumer would assume, on following the link from the MSD Website, that the news releases/company statements were being published by the party entitled to use the Merck name in relation to its goods and services. In summary it seems clear to me, on the evidence, that the matters complained of in Row EE constituted uses of Merck as a trade mark in the course of trade in the UK, within the meaning of Paragraph 3. I therefore conclude that both the First Defendant and the Second Defendant breached Paragraph 3 by their uses of Merck as a trade mark in and in relation to the news releases/company statements which are the subject of the complaints in Row EE.

I therefore conclude that the breaches of the Order alleged in Row EE have been established. I find and conclude that the First Defendant has, by reason of the matters set out in Row EE, breached Paragraph 2. I find and conclude that both the First Defendant and the Second Defendant have, by reason of the matters set out in Row EE, breached Paragraph 3.

This complaint relates to a link from the MSD Covid Research Website to a news release hosted on the Merck Website. Details of the complaint are set out in Day 2, at paragraphs 165-171. The essence of the complaint is similar to the complaints in Row EE; namely that there was an invitation on the MSD Covid Research Website to click on a link, by which the user was taken the Merck Website where the Merck branded news release could be read. As with Row EE, it is necessary to give some further explanation of how the link operated. The relevant screenshots exhibited to Day 2 were taken on 21^st January 2022.

On this date the evidence of Mr Day is that the homepage of the MSD Covid Research Website displayed a Learn More link under the heading “Clinical trials for adults who have COVID-19 and are not in the hospital”. When the user clicked on this link, a new webpage opened displaying a Merck branded news release hosted on the Merck Website. At the same time a pop-up was automatically presented which read as follows:

The news release itself was entitled “Merck and Ridgeback’s Investigational Oral Antiviral Molnupiravir Reduced the Risk of Hospitalization or Death by Approximately 50 Percent Compared to Placebo for Patients with Mild or Moderate COVID-19 in Positive Interim Analysis of Phase 3 Study”. The news release, which was dated 1^st October 2021, contained extensive use of Merck and was presented in a Merck branded environment. Details of the use of Merck are given by Mr Day at paragraph 168 of Day 2.

The Claimant says that the news release, as linked from the MSD Covid Research Website, constituted a breach of Paragraph 2 and a breach of Paragraph 3 by the First Defendant and the Second Defendant. The Paragraph 2 column in the Table shows a dispute for this Row. The MSD Defendants deny that there was use in the UK, within the meaning of Paragraph 2. The MSD Defendants deny that there was a breach of Paragraph 3, on the basis that there was no use of Merck as a trade mark in the course of trade in the UK. In the case of Paragraphs 2 and 3, the MSD Defendants rely upon Sub-paragraph (b) and Sub-paragraph (h).

The evidence in response to this complaint is given by Ms Kantor. In Kantor 1, Ms Kantor deals specifically with Row FF at paragraphs 25 and 26, where she says this:

The context in which this specific evidence is given is set out in the opening sections of Kantor 1, before Ms Kantor turns to the specific Rows which she has been asked to address. The study referred to in paragraph 25 of Kantor 1 is, I believe, the study to which Ms Kantor refers in paragraph 8 of Kantor 1, where the following explanation of the study is given:

So far as the alleged breaches of Paragraph 2 and Paragraph 3 are concerned, and if Sub-paragraph (h) is put to one side, I can deal with Row FF shortly. I refer to my analysis of Row EE. It seems to me that the same analysis applies to Row FF. If Sub-paragraph (h) is put to one side I am satisfied, on the evidence and applying the relevant principles of law, that the uses of Merck set out in Row FF, through the link provided on the MSD Website, constituted a breach of Paragraph 2 by the First Defendant, and a breach of Paragraph 3 by the First Defendant and the Second Defendant.

This leaves Sub-paragraph (h). Ms Kantor’s evidence seems clear to me. The link to the Merck-branded news release, as Ms Kantor describes the news release, did not come about by accident. The “GTO team decided to link to a press release about the results of the study”, and installed a link to the Merck-branded news release from the MSD Covid Research Website, with the pop-up quoted above. Ms Kantor now acknowledges this as a mistake, but it was clearly not an accident. As I read Ms Kantor’s evidence, the link was created intentionally. In these circumstances there was no inadvertent error, and the First and Second Defendants cannot rely on Sub-paragraph (h).

I therefore conclude that the breaches of the Order alleged in Row FF have been established. I find and conclude that the First Defendant has, by reason of the matters set out in Row FF, breached Paragraph 2. I find and conclude that both the First Defendant and the Second Defendant have, by reason of the matters set out in Row FF, breached Paragraph 3.

These complaints relate to news releases which were published by a news service called Business Wire. The news releases were accessible through Business Wire’s website. Details of the complaints are set out in Day 2, at paragraphs 172-210. This evidence is extensive, and not easy to summarise. The relevant screenshots exhibited to Day 2 were taken on a number of different dates, too numerous to set out individually. The essence of the complaints is that by clicking on the links described by Mr Day in his evidence, it was possible to access Merck branded news releases which were published by Business Wire. Mr Day gives three examples of Merck branded news releases which he was able to access through Business Wire. Mr Day’s evidence is that other news services also picked up and published these Merck branded news releases. In paragraphs 217-220 of Day 2, Mr Day gives the example of a BBC Newsnight broadcast on 2^nd December 2021 which covered the topic of anti-viral drugs, including molnupiravir (the anti-viral drug developed by the First Defendant mentioned earlier in this judgment). The broadcast made reference to the First Defendant as Merck. The images shown in the broadcast included two Merck branded news releases, the second of which was shown as having been sourced from Business Wire.

The Claimant’s case is that Merck US was engaged in the practice of publishing news releases, using Merck and with Merck branding, via Business Wire. Annex 2 confines the complaints to publication of such news releases on Business Wire, but the Claimant’s evidence is that there was also publication on other news services. The Claimant’s case is that publication on Business Wire entailed publication to the whole world, including the UK, as opposed to publication in the US and Canada only.

The Claimant says that the publication of these news releases on Business Wire constituted breaches of Paragraph 2 and breaches of Paragraph 3 by the Second Defendant only. In this context I should make specific reference to the fifth column in the Amended Annex to the Claimant’s Points in Reply, which identifies the Second Defendant’s responsibilities for the news releases in the following terms:

The Paragraph 2 column in the Table shows a dispute for this Row. The MSD Defendants deny that there was use in the UK, within the meaning of Paragraph 2. The MSD Defendants deny that there was a breach of Paragraph 3, on the basis that there was no use of Merck as a trade mark in the course of trade in the UK. In the case of Paragraphs 2 and 3, the MSD Defendants also rely upon the argument that there was no use by the MSD Defendants. The particular point raised by the MSD Defendants in this context, as I understand it, is that the MSD Defendants were not responsible, under the terms of Paragraphs 2 and 3, for the publication of news releases by Business Wire, a third party. The uses of Merck in these publications were not uses by the MSD Defendants. The MSD Defendants do not rely on any of the Sub-paragraphs.

The evidence in response to these complaints is given by various witnesses for the MSD Defendants. Mr Almquist, counsel for Business Wire, gives evidence in Almquist 1 about Business Wire itself and the procedures for posting news releases on its services. It is convenient to quote what Mr Almquist explains at paragraphs 7-12 of Almquist 1:

Moving to Choi 1, Ms Choi explains the procedure for distributing news releases in the following terms, at paragraphs 11-13:

The distribution of news releases is also addressed by Ms Ronaldo in Ronaldo 1. In paragraph 10 Ms Ronaldo explains that her team looks after the news releases and company statements of their business (which I take to mean the business of Merck US). At paragraphs 12-15 Ms Ronaldo gives the following explanation of the process:

At paragraphs 16-17 of Ronaldo 1, Ms Ronaldo adds the following evidence:

At paragraphs 20 and 21 of Ronaldo 1, Ms Ronaldo gives evidence of a search in the name of the Claimant on the Business Wire website, using a computer located in New York. This search, conducted on 27^th October 2022, produced results featuring the Claimant, identified as Merck KGaA. Mr Ronaldo also gives evidence that Merck KGaA can be found mentioned or featured in posts by researchandmarkets.com on Business Wire. There is some dispute about this evidence; see Day 4 at paragraphs 6-11, and see also the evidence of Mr Karet in response to Day 4, in Karet 13. It appears that the search described by Ms Ronaldo was carried out using Merck, not Merck KGaA. In any event, the point made by the MSD Defendants, on the basis of this evidence, is that the equivalent of the complaints made in Row GG can be made against the Claimant. It is said by the MSD Defendants to be clear that, in practice, news releases issued by either Merck Global or Merck US through Business Wire are accessible throughout the world. I do not find it necessary to resolve the conflict in this evidence, so far as it exists. The relevant point which emerges from this evidence seems to me to be that, in the case of Business Wire at least, it is possible to find references to Merck, from the US and the UK, associated with Merck US and Merck Global.

I have reviewed the evidence in relation to Row GG in some detail because it seems to me that this evidence answers the question of whether the use of Merck in the news releases referred to by Mr Day constituted breaches of Paragraph 2 or Paragraph 3. It seems to me that there are two related difficulties which confront the Claimant in relation to Row GG.

The first difficulty is that both Paragraph 2 and Paragraph 3 require use of Merck, by the First Defendant in the case of Paragraph 2 and by a Defendant or Defendants in the case of Paragraph 3. In the case of Row GG however the relevant uses of Merck appeared on Business Wire. The evidence of Mr Almquist and Ms Choi is that news releases from Merck US are uploaded to Business Wire on a national basis. They become available to readers anywhere in the world by reason of the global reach of Business Wire. Thus, the news releases, with their uses of Merck, can be said to be targeted at the UK once they are published by Business Wire. I have considerably more difficulty in seeing that the First Defendant or the Second Defendant were targeting their news releases at the UK when the news releases were distributed by Merck US to Business Wire.

As I have said, both Paragraph 2 and Paragraph 3 require use of the Merck in the UK. On the evidence, and applying the relevant principles of law, I am not persuaded that the use of Merck in the news releases published on Business Wire constituted the required use of Merck in the UK by the First Defendant or the Second Defendant. It seems to me that the link between what was done by Merck US, in distributing the news releases, and what was done by Business Wire or other media outlets, in targeting those news releases at the UK, is insufficient to constitute the required use, either for the purposes of Paragraph 2 or Paragraph 3.

The second difficulty is part and parcel of the first difficulty. Both Paragraph 2 and Paragraph 3 require the relevant use of Merck to be targeted at the UK. In the present case there was such targeting, as it seems to me, by Business Wire. This was not however, as I read the evidence, targeting by the First Defendant or the Second Defendant. In these circumstances it seems to me that neither Defendant can be said to have breached Paragraph 2 or Paragraph 3.

For these reasons I am not satisfied, on the evidence and applying the relevant principles of law, that the matters complained of in Row GG constituted either a breach of Paragraph 2 by the First Defendant or a breach of Paragraph 3 by the Second Defendant.

I would stress that this is a conclusion reached on the evidence which I have read. I recognise the possibility for abuse of Paragraphs 2 and 3 of the Order by the device of a party publishing Merck branded material through third parties. My conclusion is not intended as a licence for this kind of abuse. As I have said, I have reached my conclusion on the basis of the particular evidence before me on the Application.

I therefore conclude that the breaches of the Order alleged in Row GG have not been established. This is because the Claimant has failed to satisfy me, on the evidence, that the uses of Merck complained of in Row GG constituted uses of Merck for which the First Defendant or the Second Defendant can be held responsible.

My conclusions on the Application, in terms of those alleged breaches of the Order which have been established and those alleged breaches of the Order which have not been established, are most easily summarised in tabular form. For ease of distinction, entries in the table where breaches have been established are shown in bold print:

The Application succeeds in part, to the extent set out in the table above. I will make a declaration or declarations to that effect. I will hear counsel, as necessary and at an adjourned hearing, on the form of such declaratory relief and on any other matters consequential upon this judgment. In the usual way the parties are encouraged to agree, subject to my approval, as much as they can in relation to the terms of the order to be made consequential upon this judgment.