Merck Sharp & Dohme Corp (formerly known as Merck & Co, Inc) v Merck KGaA (formerly known as E Merck)
Jurisdiction | Singapore |
Court | Court of Three Judges (Singapore) |
Judge | Sundaresh Menon CJ,Andrew Phang Boon Leong JCA,Judith Prakash JCA,Steven Chong JCA,Quentin Loh JAD |
Judgment Date | 26 February 2021 |
Neutral Citation | [2021] SGCA 14 |
Citation | [2021] SGCA 14 |
Defendant Counsel | Professor Yeo Tiong Min SC (School of Law, Singapore Management University) as amicus curiae.,Kang Choon Hwee Alban, Mok Ho Fai and Teo Tze She (Bird & Bird ATMD LLP) |
Hearing Date | 29 October 2020 |
Plaintiff Counsel | Ho Pei Shien Melanie, Lam Chung Nian, Chang Man Phing Jeremy, Lim Xian Yong Alvin and Lin Si Hui (WongPartnership LLP) |
Published date | 03 March 2021 |
Docket Number | Civil Appeal No 223 of 2019 |
Subject Matter | Inconsistent positions,Conflict of Laws,Abuse of process,Henderson v Henderson doctrine,Issue estoppel,Foreign judgments,Res judicata |
Issue estoppel, cause of action estoppel and the doctrine of abuse of process are all principles that are part of the armoury of tools availing a court confronted with the need to act so as to prevent litigants from being twice vexed in the same matter or in respect of the same or sufficiently similar issues. At the same time, these doctrines also promote the public interest in upholding the finality of litigation. Where issue estoppel is said to arise out of a prior
In our judgment, the principles governing domestic issue estoppel as set out in
The respondent, Merck KGaA (formerly known as E Merck) (“the Respondent”), and the appellant, Merck Sharp & Dohme Corp (formerly known as Merck & Co, Inc) (“the Appellant”), both trace their roots to a German family business that commenced in 1668 under the name “E Merck”. Over the years, disparate branches of the business began to operate separately and independently in Europe and North America.
In the 1970s, the predecessors of the Appellant and the Respondent entered into a co-existence agreement to govern the use of the name “Merck” in various jurisdictions around the world. This agreement was contained in two documents, respectively termed the “1970 Agreement” and the “1975 Letter”.
The 1970 Agreement provided in relevant part as follows:
AGREEMENT made January 1, 1970
between
MERCK & CO., INC. of Rahway, New Jersey, USA
and
E. MERCK of Darmstadt, Germany.
Definitions:
…
United States and Canada:
Germany:
All other countries:
…
The 1975 Letter set out several clarifications to the 1970 Agreement. The parties did not rely on any of its provisions in this appeal, and we therefore do not set out its terms here.
The English and Australian proceedingsThe Appellant and the Respondent are embroiled in litigation in a number of jurisdictions around the world, including the United States, England, Germany, Switzerland, Mexico, India, Australia, China and Hong Kong, over the use of the name “Merck”.
Relevant for the purposes of this appeal are three English decisions (collectively, “the English Decisions”) that were handed down before proceedings were commenced in Singapore by way of HC/S 415/2018 (“Suit 415”). These comprise:
The Appellant also relied on a decision of the Australian Federal Court dated 12 July 2019 (“the FCA Decision”, being
On 23 April 2018, the Respondent and Merck Pte Ltd commenced Suit 415 against the Appellant and three other defendants for trade mark...
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