MRK Merck and Co Inc

By Ulrike Dauer 

FRANKFURT--Germany's Merck KGaA said Friday it has won a U.K. court ruling that prevents U.S. drug company Merck & Co. Inc. from using the Merck name in the U.K. when doing business.

But the dispute isn't over. Merck & Co. said it would appeal the U.K. court decision, and it filed a suit Friday in the U.S. against the smaller German company over use of the name.

The German Merck and its bigger U.S counterpart, which share roots dating back before World War I but aren't now affiliated, have been in a three-year legal dispute over the use of the name in the U.K. Legal battles in other countries are also under way.

Both pharmaceuticals companies had agreed in 1955, and again in 1970, that Germany's Merck is entitled to use the name everywhere in the world except in the U.S. and Canada, where it goes by the name EMD Group. Merck & Co., meanwhile, can use the Merck name in the U.S. and Canada, but agreed to call itself Merck Sharp & Dohme Corp. outside North America.

"In its judgment, the English High Court stated that [Merck Sharp & Dohme] had breached an agreement with the company by using 'Merck' alone in the U.K., either as a trademark or a name, online or offline," the German pharmaceuticals company said on Friday.

"Our objective has been to protect the status quo established in the existing agreement," said Friederike Rotsch, general counsel at Germany's Merck.

The U.S. Merck said it was disappointed with the U.K. ruling, especially for use of the name on websites and social media. "This decision reflects one step in a litigation process taking place in a number of countries and will be appealed," the U.S. company said.

The U.S. Merck also said it is itself suing the German company in the U.S. over use of the name Merck on U.S. territory. The U.S. lawsuit was filed on Friday in U.S. District Court in New Jersey, the company said.

In the complaint, which carries Friday's date, Merck accuses the German company of "trademark infringement, trademark dilution, unfair competition, false advertising, deceptive trade practices, cybersquatting and breach of contract."

Write to Ulrike Dauer at ulrike.dauer@wsj.com

(END) Dow Jones Newswires

January 15, 2016 15:40 ET (20:40 GMT)

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