Court of Appeal stays trademark infringement proceedings under Art 30 Recast Brussels Reg to avoid parallel litigation.

THE COURT OF APPEAL

CIVIL

Approved. No redactions needed.

Record Number: 2024 287

High Court Record Number: 2023/3882P

Neutral Citation Number [2025] IECA 192

Allen J. O’Moore J. McDonald J.

BETWEEN:

MERCK KGaA

MERCK SERONO (IRELAND) LIMITED

MERCK MILLIPORE LIMITED

SIGMA-ALDRICH IRELAND LIMITED

and

VERSUM MATERIALS IRELAND LIMITED

APPELLANTS

-AND-

MERCK SHARP & DOHME LLC

And

MERCK SHARP & DOHME IRELAND (HUMAN HEALTH) LIMITED

RESPONDENTS

JUDGMENT of Justice Denis McDonald delivered on 24th September 2025

Introduction

1. This is an appeal by the plaintiffs/appellants (“the appellants”) from a decision of the High Court (Barrett J.) (i) setting aside an order granting leave to serve the first named defendant/respondent out of the jurisdiction and striking out the proceedings against that respondent; (ii) staying the first named appellant’s claim of trade mark infringement against the second named defendant/respondent pursuant to Art. 136(1)(b) of Regulation 2017/1001 (“the EU Trade Mark Regulation”); and (iii) staying the balance of the claims made against the second named defendant/respondent pursuant to the inherent jurisdiction of the High Court.

2. The relevant order of the High Court was made on 6th December 2024 following delivery of a detailed written judgment on 18th October 2024 ([2024] IEHC 613) on foot of a motion brought by the defendants/respondents (“the respondents”) dated 14th February 2024. In their motion, the respondents had sought:

(a) an order pursuant to O. 12, r. 26 setting aside an order made on an ex parte basis on 31st July 2023 giving the appellants leave to serve notice of the plenary summons on the first named respondent outside the jurisdiction on the basis that the claim fell within the ambit of O. 11, r.1(e)(iii) (the claim against that respondent being confined to a claim at the suit of the first named appellant for alleged breach of contract);

(b) an order striking out the claim against the first named respondent;

(c) an order pursuant to Art. 136(1)(a) of the EU Trade Mark Regulation declining jurisdiction in respect of the claim made by the first named appellant against the second named respondent in respect of alleged trade mark infringement;

(d) in the alternative, an order pursuant to Art. 136(1)(b) of the EU Trade Mark Regulation staying the claim of trade mark infringement against the second named respondent;

(e) an order pursuant to Art. 29 or Art. 30 of Regulation 1215/2012 (“the Recast Brussels Regulation”) and/ or the inherent jurisdiction of the High Court declining jurisdiction or staying the proceedings, as applicable.

3. As noted above, the High Court judge granted the relief summarised at paras. 2(a) and 2(b) and he also granted a stay on the trade mark infringement claim under Art. 136(1)(b). In addition, he granted a stay of the balance of the claims made in the proceedings under the inherent jurisdiction of the Court, although both parties have confirmed, during the course of the hearing of the appeal that, while the respondents sought such relief as a catchall in their motion, that relief was not the subject of argument in the High Court. It should be noted that the judgment of the High Court judge does not address the relief described in para. 2(c) above; nor does it address the relief claimed under Art. 29 and/or Art. 30 of the Brussels Recast Regulation.

4. For the reasons outlined below, I am of the view that the decision of the High Court setting aside service of the proceedings on the first named respondent and striking out the claim against it should be upheld. I am also of the view that the balance of the proceedings should be stayed. However, I believe that the High Court judge was in error in relation to the basis for the grant of the stay. In my view, Art. 30 of the Recast Brussels Regulation is the only basis on which the proceedings should be stayed.

Background

5. The issues in dispute between the parties to these proceedings form part of a long running and geographically extensive dispute between two groups of companies in relation to the use of trade marks and trade names incorporating the name “Merck”. Both groups trace themselves back to a common ancestor in Germany. At the apex of one group of companies is the first named appellant, Merck KGaA (“Merck Germany”) which is headquartered in Darmstadt, Germany. It is the parent company of an international science and technology group of companies. The group’s core businesses include healthcare, life sciences and electronics. Merck Germany is the registered proprietor of three Irish trade marks namely trade mark numbers 59006, 59007 and 267282 all of which comprise figurative marks embodying the name Merck. It is also the registered proprietor of an EU word mark, Merck, and it is the proprietor of a variety of national trade marks in a number of other jurisdictions around the world.

6. On the other side of the dispute is the MSD group of companies of which the first respondent, Merck Sharp & Dohme (“MSD”), is a key member. MSD is headquartered in Rahway, New Jersey. The second named respondent, Merck Sharp & Dohme Ireland (Human Health) Limited (“MSD Ireland”) is a subsidiary of MSD. The core business of the MSD group of companies is pharmaceuticals. MSD is the successor in title to an entity that was formerly called Merck & Co., Inc. and was later called Merck Sharpe & Dohme Corp (“MSD Corp”).

7. The unusual circumstances in which both groups of companies came to use the trade name Merck can be briefly explained. As noted above, both groups of companies have a common origin. According to the statement of claim delivered in the proceedings, the companies on both sides of the dispute have their origin in an apothecary’s shop founded by the Merck family in Darmstadt in 1668. That business was, subsequently, carried on under the name E. Merck and, over the years, it grew to become one of the world’s largest manufacturers of chemical and pharmaceutical products. In 1889, a member of the Merck family established a trading company called Merck & Co. in the United States in partnership with a third party. That business was subsequently incorporated in 1902 as Merck & Co., Inc. but, during the course of World War I the majority of the shares in that company were appropriated by the United States Government as enemy property. They were later reacquired by George Merck after the war had ended. From that point, E. Merck, (now Merck Germany) and Merck & Co., Inc. were separate independent businesses whose operations were distinct from each other.

8. As the business of the companies grew, there was an obvious risk of confusion between them. This was recognised on both sides and, for that reason, an informal arrangement evolved under which the use of the word Merck in connection with the business of Merck & Co., Inc. was almost exclusively confined to North America and U.S. dependencies while, in the rest of the world, the use of the word Merck exclusively pertained to the business of

E. Merck. This division of world markets did not extend to Cuba, the West Indies and the Philippines where it appears that the word Merck was used by both sides. The informal arrangement between them was subsequently incorporated in a treaty agreement entered into in November 1932 but that agreement was subsequently attacked by the U.S. Department of Justice under U.S. anti-trust legislation. There was also a period, in the wake of World War II, where E. Merck was unable to trade for several years as a consequence of which the U.S. business began selling product in markets previously exclusive to the German company. However, in 1955, the parties entered into a co-existence agreement governing their respective use of the word Merck in different territories. That was subsequently replaced by an agreement entered into in 1970 (which was supplemented by a further letter agreement in 1975) which continues to govern the relationship between Merck Germany and MSD. The appellants contend that, by clause 7 of the 1970 agreement, it was agreed that Merck Germany was exclusively entitled to use the name and sign Merck in all countries of the world other than the United States, Canada, Germany, Cuba and the Philippines. Over the course of the following years, it has become clear that MSD and its predecessors in title do not accept this interpretation of the 1970 agreement. It appears to be the case that the issues in this regard intensified after MSD merged with Schering-Plough and became a more international business and began to promote a presence online and, more recently, on social media. This, in turn, led to the commencement by Merck Germany of proceedings against MSD (and its predecessors in title) in a number of jurisdictions. In order to understand the issues which fall for consideration in this appeal, it is necessary to briefly describe some elements of those proceedings.

9. Proceedings were first commenced by Merck Germany in England and Wales on 8th March 2013 in which MSD Corp (the immediate predecessor in title to MSD) was named as a defendant together with a number of other companies in the MSD group. In those proceedings, Merck Germany alleged breaches of the 1970 co-existence agreement on the part of MSD Corp on the basis of activities carried on by the latter within the United Kingdom. The case proceeded on the basis that German law governed the agreement and the English courts interpreted the agreement applying the relevant principles of interpretation applicable under German law (which, in some respects, are quite different to those which apply under English and Irish law). A claim was also made in respect of alleged infringement of a number of U.K. registered trade marks, some of which are word marks and some of which are figurative marks. Notwithstanding the fact that some are figurative and some are word marks, each of them incorporates the name Merck. While Merck Germany relied on both causes of action, it appears that Merck Germany relied at the trial upon the same activities of the defendant in support of its claim for breach of contract as it did in support of its claim for infringement of the U.K. trade marks.

10. Liability issues in the English proceedings have been determined substantially in Merck Germany’s favour but damages remain to be assessed. A number of judgments have been delivered in those proceedings both by the High Court of England & Wales and by the Court of Appeal of England & Wales. These can be found at [2016] EWHC 49 (Pat), [2017] EWCA Civ 1834, [2020] EWHC 1273 (Ch), [2020] EWHC 2120 (Ch), [2024] EWHC 820 (Ch) and [2025] EWCA Civ 343. While the evidence in those proceedings related to activities alleged to have taken place in the United Kingdom, the acts which were alleged to amount to a breach of the coexistence agreement and which were alleged to infringe the U.K. trade marks appear to have been very similar to those now asserted against the respondents in this jurisdiction.

11. The fact that the contractual claim in the English proceedings was limited to breaches which occurred within the United Kingdom should be noted. That claim was upheld by the High Court. In the wake of its judgment upholding the claim, an issue arose in relation to the scope of the relief that should be granted. Notwithstanding the fact that the claim had been pleaded in that way, Merck Germany sought to persuade the High Court that the court should grant relief in relation to the worldwide position. That claim was opposed by MSD Corp. and the other respondents. The High Court judge refused to grant relief on a worldwide basis and confined his final order to the United Kingdom. Merck Germany appealed against that element of his decision but that appeal was rejected in very strong terms by the Court of Appeal of England & Wales. In his judgment, Kitchin L.J. rejected the appeal on a number of grounds. In para. 236 of his judgment he emphasised that the complaint which had been made in the pleadings and which had been pursued in evidence at the trial was limited to events which occurred within the United Kingdom. It had never been asserted in the proceedings that any activity of the defendants outside the United Kingdom amounted to a breach of the 1970 co-existence agreement. In its defence, Merck US had met the claim, as pleaded. He added in para. 239 that it would be manifestly unjust to extend the relief granted by the court to other territories in respect of which there had been no investigation of or finding in relation to the factual position concerning the activities of MSD in those territories.

12. Not long after the English proceedings were commenced in 2013, proceedings were also commenced by Merck Germany in the Hamburg Landgericht against both Merck & Co. Inc. and MSD Corp (i.e. the predecessors in title to MSD) alleging infringement of an EU trade mark namely EUTM 283986 in respect of the word Merck. The focus of the trade mark infringement claim is the online use of the Merck name. No case was made in respect of offline use. Allegations of unfair competition and other rights asserted by Merck Germany under German law also formed part of that action. Although MSD Ireland was not named as a defendant, the proceedings sought relief in relation to alleged pan-European infringement of the EUTM. At the time the German proceedings were commenced, the United Kingdom was among the jurisdictions covered by the claim. However, that changed following an application by the defendants to those proceedings under Art. 109(1) of Regulation No. 207/2009 (which was the applicable Regulation at that time) for an order that the German Court should either decline jurisdiction or stay the proceedings on the basis that the German proceedings involved the same cause of action and the same parties as those in England and Wales. In response, Merck Germany sought to “carve” the United Kingdom out of the claim made in the German proceedings. This was contested by the defendants. There was ultimately a reference to the Court of Justice (Case C-231/16 Merck KGaA v. Merck & Co. Inc. ECLI:EU:C:2017:771). The Court determined that, in light of the “carve-out” of the United Kingdom, Art. 109(1)(a) was not engaged. In para. 44 of the judgment, the Court of Justice first addressed what is meant by the “same cause of action” for the purposes of Art. 109(1)(a) (which equates to Art. 136(1)(a) of the current Regulation): - “In view of the foregoing considerations, the answer to the first and second questions is that Art. 109(1)(a) of Regulation No 207/2009 must be interpreted as meaning that the condition laid down in that provision as to the existence of the ‘same cause of action’ is satisfied where actions for infringement between the same parties, on the basis of a national trade mark and an EU trade mark respectively, are brought before the courts of different Member States, only in so far as those actions relate to an alleged infringement of a national trade mark and an identical EU trade mark in the territory of the same Member States.”

13. The Court then turned to address the effect of the “carve-out” in para. 57 of its judgment where it explained: - “It follows that where, following a partial withdrawal, properly declared by the applicant, of an action for infringement on the basis of an EU trade mark seeking initially to prohibit the use of that trade mark in the territory of the European Union, such a withdrawal concerning the Member State referred to in the action, brought before the court first seised, on the basis of a national trade mark seeking to prohibit the use of that trade mark within the territory of that Member State, the actions for infringement no longer relate to an alleged infringement of a national trade mark and an identical EU trade mark in the territory of the same Member States, the court other than the court first seised is not required to decline jurisdiction in favour of the court first seised.”

14. The German proceedings have now been disposed of at first instance. As noted in the written submissions of the appellants, a detailed written judgment was given by the Hamburg Landgericht on 1st November 2018 in which the Court substantially rejected the case made by Merck Germany. In doing so, it appears to have taken a different view of the effect of the co-existence agreement of 1970 to that taken by the English courts. It also appears from its judgment that the Landgericht’s rejection of the appellants’ claims of trade mark infringement was substantially influenced by the view the court took of the defendants’ entitlements under the 1970 co-existence agreement. It should be noted, in this context, that in an affidavit of a German lawyer, Ms. Sophia Sandra Redeker, sworn on behalf of the appellants in these proceedings, it was emphasised that no contractual claim was ever advanced by Merck Germany in the proceedings before the Landgericht. The case was also made by Ms. Redeker that the German court did not make any substantive findings regarding breaches of that agreement. That may be correct but it is clear from a consideration of an English language translation of the judgment that the Landgericht made extensive reference to the agreement and reached the conclusion that many of the allegedly infringing activities on the part of the defendants were authorised by the agreement such that they could not constitute infringement of the trade marks.

15. Merck Germany has appealed the judgment of the Hamburg Landgericht to the Hanseatic Regional Court of Hamburg and that appeal is now listed for hearing later this year. There is nothing in the affidavits filed in the course of the High Court proceedings in this jurisdiction which explains why the hearing of the appeal will not proceed until almost

7 years after the Landgericht decided the matter at first instance.

16. For completeness, it should be noted that, in addition to the proceedings in England & Wales and in Germany, Merck Germany has also brought proceedings against MSD companies in Australia, Singapore, Hong Kong, China, Switzerland and France. Conversely, proceedings were also commenced by a number of MSD companies in the courts of New Jersey against Merck Germany in 2016 alleging, among other things, breaches of the 1970 agreement and trade mark infringement arising from a promotional campaign which Merck Germany pursued in the United States.

The proceedings in Ireland

17. The proceedings in Ireland began with an application to the High Court on 31st July, 2023 for leave to issue proceedings and to serve notice of the proceedings on MSD in New Jersey. That application was successful and, by an order of that date, the High Court gave leave pursuant to O. 11, r. 1(e)(iii) to serve notice of the plenary summons on MSD in New Jersey. That rule is relevant where it is sought to initiate proceedings against a foreign defendant, not domiciled in an EU Member State (or a State which is a party to the Lugano Convention), in respect of a breach of contract (wherever the contract may have been made) which is alleged to have been committed within the jurisdiction of the State.

18. The application under O. 11 was grounded on an affidavit of the appellants’ solicitor, Mr. Michael Finn, sworn on 26th July 2023 in which he described the parties and the historical background to the dispute and in which he also provided details about proceedings between the same (or related) parties in a broad range of jurisdictions including England and Wales, Germany, Australia, Singapore, Hong Kong, France, China, Switzerland and India. He further provided evidence in relation to the case made by the appellants that they have a substantial reputation in Ireland in the Merck name and brand and he also described the nature of the respective activities of the respondents which the appellants allege have involved a breach of the co-existence agreement or an infringement of the Irish trade marks or passing off. There is a significant dispute between the parties as to whether the affidavit addresses sufficiently (or at all) the requirements of O. 11, rr. 2 and 5 under which a party seeking leave to serve a defendant outside the jurisdiction must place evidence before the Court as to the comparative cost and convenience of proceedings in Ireland, or in the place of the defendant’s residence.

19. The plenary summons was issued on 3rd August 2023 in which Merck Germany and a number of its Irish subsidiaries are named as plaintiffs and MSD and MSD Ireland are named as defendants. A statement of claim was subsequently delivered on 25th October 2023.

The claim made by the appellants in the statement of claim

20. There are three distinct aspects to the claim made by the appellants in the statement of claim. First, there is a claim by Merck Germany in respect of alleged breach by MSD of the 1970 co-existence agreement. Second, there is a claim for trade mark infringement asserted by Merck Germany against MSD Ireland in respect of the three Irish trade marks described in para. 5 above. Third, there is a claim made by all of the appellants in respect of alleged passing off but that claim is asserted solely against MSD Ireland. Thus, the claim against MSD is purely contractual. No allegation is made that it has infringed the Irish trade marks or passed itself off as associated with Merck Germany or passed off its goods or services as or for those of the appellants. Those claims are made solely against MSD Ireland. As the registered proprietor of the trade marks, Merck Germany is the sole plaintiff asserting a claim based on trade mark infringement. The claim made by the remaining appellants is confined to the tort of passing off but, as noted above, Merck Germany also makes that claim.

21. While – from the perspective of Irish law – the causes of action are different, it is important to note that all three claims are based on the alleged use of the name and sign “Merck” in the State. In the particulars of the breach of contract claim alleged against MSD, it is contended that “Merck” has been used:

(a) in email addresses with the domain “@.merck.com” used by employees of the respondents based in Ireland for commercial purposes. In further particulars provided in response to a request made by the respondents, the appellants identified seven specific email addresses in this context. Six of them relate to named individuals while the remaining one was medinfo_Ireland@merck.com;

(b) on the website www.msd-ireland.com which is registered in the name of MSD;

(c) on the website www.msdconnect.ie which is registered in the name of MSD Corp (the predecessor in title to MSD);

(d) on the website www.msd-animal-health.ie which is registered in the name of MSD Ireland;

(e) on the website www.msd.com which is registered in the name of MSD and which it is alleged is accessible from Ireland;

(f) in applications available on Apple Inc.’s Irish App Store and Android applications available on the Irish Google Play Store in particular the MSD Manual Professional app;

(g) in the Merck Manual Home Health Handbook available on Amazon; and

(h) at conferences and events in Ireland.

(i) In further particulars, it was also alleged that copies of a veterinary manual published by MSD and described as the Merck Veterinary Manual were provided to University College Dublin.

22. It will be seen that most of the allegations relate to on-line use of the Merck name and mark but there is also a more limited allegation of off-line use. Insofar as on-line use is concerned, it is specifically alleged that the websites and sources identified above target persons in Ireland or that they are, at minimum, accessible from Ireland. Insofar as websites accessible from Ireland are concerned, a further allegation is made that they are targeted at a global audience and are not territorially limited.

23. In support of its allegation of trade mark infringement against MSD Ireland, Merck Germany relies on the use of “Merck” in Ireland in the email addresses mentioned above and also on the website www.msdconnect.ie and at conferences and events in Ireland. Thus, both on-line and off-line use is relied upon.

24. The passing off claim against MSD Ireland is asserted on behalf of all of the appellants. They contend that they have acquired a valuable goodwill and reputation in the name and trade mark “Merck”. The allegation made in para. 34 of the statement of claim is that, by its use of the name and sign “Merck” in the State, MSD Ireland has passed off its goods and/or services as the goods or services of the appellants or one or other of them. Alternatively, it is alleged that MSD Ireland has passed itself off as a business forming part of the Merck Group and/or as being in some way associated with the appellants or one or other of them. Three instances of alleged confusion are relied upon in this context, one of which is alleged to have occurred in 2017, another in 2020, and one more in 2023.

The respondents’ challenge to the jurisdiction of the Court

25. In December 2023, the proceedings were admitted into the Commercial List of the High Court. At that point, it was intimated on behalf of the respondents that they proposed to bring an application to challenge the jurisdiction of the court. Directions were fixed for that purpose. The application to challenge jurisdiction was subsequently launched in February 2024 in which the respondents sought the relief described in para. 2 above.

26. In support of the application to set aside the order giving leave to serve the proceedings outside the jurisdiction, MSD made the case before the High Court that the claim made by Merck Germany against MSD in these proceedings has no more than a tenuous connection with the State such that a foreign defendant should not be compelled to litigate a claim of that kind in this jurisdiction. In addition, MSD made the case that Merck Germany had wholly failed to comply with the basic requirements of O. 11, rr. 2 and 5 under which a party seeking leave to serve proceedings out of the jurisdiction must place evidence before the court as to the comparative cost and convenience of proceedings in Ireland or in the place of the proposed defendant’s residence. It is accepted by both parties that Merck Germany bears the burden of demonstrating compliance with this requirement on an application of this kind. This follows from the decision of this Court in Albaniabeg Ambient Sh.pk v. Enel S.p.A. [2018] IECA 46.

27. The second aspect of the respondents’ application is that referred to in para. 2(c) above, namely the relief sought under Art. 136(1)(a) of the EU Trade mark Regulation. That relief is sought solely by MSD Ireland in relation to the trade mark infringement claim. Article

136 governs simultaneous and successive civil actions on the basis of EU trade marks and national trade marks which are pending in the courts of two or more Member States, one of which is being pursued on the basis of an EU trade mark while the other (or others) are on the basis of a national trade mark. Under Art. 136(1)(a) the court, other than the court first seised, is required, of its own motion to decline jurisdiction in favour of the latter where the trade marks concerned are identical and valid for identical goods or services.

28. As outlined in para. 2(d) above, MSD Ireland also made the case that, if it failed to satisfy the court that Art. 136(1)(a) applies, the proceedings should be stayed under Art. 136(1)(b) which applies where the trade marks are either identical and valid for similar goods or services or where the trade marks concerned are similar and valid for identical or similar goods or services. In such event, the court, other than the court first seised, “may stay its proceedings” (emphasis added). Thus, while there is a mandatory obligation to decline jurisdiction in cases which meet the requirements of Art. 136(1)(a), the grant of a stay under Art. 136(1)(b) is at the discretion of the court. It is clear from the text of both Art. 136(1)(a) and Art. 136(1)(b) that they will not apply unless the actions for infringement concerned involve both the same “cause of action” and the same parties in both sets of proceedings.

29. As noted in para. 2(e) above, the respondents also sought an order pursuant to either Art. 29 and/or Art. 30 of the Recast Brussels Regulation declining jurisdiction or staying the proceedings (as applicable). While the inherent jurisdiction of the High Court was also expressly invoked, it did not form part of the arguments made on behalf of the respondents in the course of the application before the High Court judge.

30. Articles 29 and 30 of the Recast Brussels Regulation have broader application than Art. 136 of the EU Trade mark Regulation which can, by its terms and by its nature, apply solely to the trade mark infringement claim asserted by Merck Germany. Article 29 applies where proceedings involving the same cause of action between the same parties are brought in the courts of different EU Member States. In such event, any court other than the court first seised is required of its own motion to stay its proceedings until such time as the jurisdiction of the court first seised has been established.

31. The respondents argued that Art. 29 applied to the passing off claim and that it also applied to the claim against MSD in the event that it failed in its application under O. 12, r.

26. Like Art. 136 of the EU Trade mark Regulation, Art. 29 only applies where both sets of proceedings involve the same cause of action and are between the same parties. In contrast, Art. 30 is not so confined. It applies where related actions are pending in the courts of different EU Member States. In such event, any court, other than the court first seised, has a discretion to stay its proceedings. Article 30.3 makes clear that actions will be deemed to be related where they are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments. Given the terms of Art. 30, there is clearly scope for its application in circumstances where the stricter requirements of Art. 136 of the EU Trade mark Regulation or Art. 29 of the Recast Brussels Regulation are not satisfied. In this context, it appears to be very clear from Art. 122 of the EU Trade mark Regulation that Art. 30 of the Recast Brussels Regulation can continue to be invoked (in a case which is shown to fall within its ambit) notwithstanding the express provisions of Art.

136 of the EU Trade mark Regulations. Article 122 specifically provides that, unless otherwise specified in the Regulation, the EU rules on jurisdiction (which plainly includes the Recast Brussels Regulation) apply to (among other things) “proceedings relating to simultaneous and successive actions on the basis of EU trade marks and national trade marks”. If Art. 136 of the EU Trade marks Regulation was intended to be the exclusive method by which the courts of EU Member States were required to deal with simultaneous and successive actions in respect of trade mark infringement matters, it is impossible to understand why those words would appear in Art. 122. While counsel for the appellants asserted that Art. 122 does not have this effect, he did not identify any authority for that proposition and did not make any reasoned argument as to why the words quoted above do not make it very clear that Art. 30 of the Recast Brussels Regulation continues to apply to cases falling within its ambit and which are not covered by either limb of Art. 136(1) of the EU Trade Mark Regulation or Art. 29 of the Recast Brussels Regulation.

The High Court judgment

32. In his judgment delivered on 18th October 2024, the High Court judge acceded to the application made by MSD under O.12, r. 26. The principal basis for the decision was that the High Court judge was not satisfied that the requirements of O. 11. rr. 2 and 5 had been satisfied. However, as explained below, the judge also appears to have taken the view that, in addition, the claim made by Merck Germany against MSD had no more than a tenuous connection to Ireland and that this was an insufficient basis for the High Court to assume jurisdiction over the claim against MSD.

33. In para. 19 of his judgment, the judge drew attention to the requirements of O. 11, rr.

2 and 5 and he explained that the effect of O. 11, r. 2 is that a party seeking leave under O.

11 to serve proceedings outside the jurisdiction must provide evidence as to the comparative cost and convenience of proceedings in this jurisdiction as against the cost and convenience of proceedings in the jurisdiction in which the proposed defendant is based. In that context, having first referred to the observations of Fennelly J. in the Supreme Court in Analog Devices v. Zurich Insurance [2002] 1 I.R. 272, at pp. 287-288, he held that the plaintiffs bear the burden of establishing that Ireland is a convenient forum to hear the dispute. Applying that principle to this case, the judge said that the plaintiffs were accordingly required to provide evidence as to the cost and convenience of suing in Ireland as opposed to New Jersey, where MSD is based. In para. 19 of his judgment, he noted that such particulars “were completely absent from the Order 11 affidavit in this case”. In para. 91, he held that Merck Germany had failed to satisfy him that “New Jersey is not an appropriate place for proceedings” and he noted that there were already proceedings extant between the parties in that jurisdiction. He expressed a similar view in para. 123 where he said that Merck Germany “has failed to address how New Jersey is not a better locale for its proceedings. Order 11 requires that this be addressed and it has not been addressed.” Having reiterated a similar view in para. 128(b), he then indicated in para. 129 that an order should be made pursuant to O. 12, r. 26 setting aside the service of the summons on MSD.

34. It appears from the judgment of the High Court judge that there may also have been a second basis for his conclusion that the order authorising service of the proceedings on MSD should be set aside. This emerges from the section of the judgment headed “Some Applicable Case-Law” which runs from para. 29 to 68. In paras. 36 and 37 of his judgment, he referred to the decision of the Supreme Court in Grehan v. Medical Inc. [1986] I.R. 528. He drew attention to the observation made by Walsh J. in that case (at p. 542) to the effect that there is a heavy burden on the court to examine the circumstances of each case before exercising its jurisdiction to make an order for service of proceedings outside the jurisdiction and that it would not be appropriate to permit such service “where the case only had a tenuous connection with the country on its facts and in terms of the law likely to govern questions of liability and related matters”.

On that basis, the High Court judge expressed the view in para. 38 of his judgment that “what is required is a more-than-tenuous connection”. He added that this consideration has a particular resonance on the facts of this case in circumstances where he suggested that the “true locus” of “the principal alleged breach relied upon” is the United States. It appears that he took that view on the basis (a) that Merck Germany’s principal complaint related to the use of e-mail addresses that feature the word “Merck” and (b) that the allocation of the e-mail addresses in question occurred in the United States.

He then observed that “ … regardless of the foregoing, again (as Grehan indicates) there must be a substantial connection to Ireland.” Subsequently, although the judge did not expressly advert further to this issue in setting out his conclusions in paras. 127 to 130, it appears from the opening words of para. 128 of his judgment that his conclusions had regard to “the text of this judgment to this point”. In those circumstances, it would appear that the lack of a “substantial connection” to Ireland formed part of the rationale for the High Court’s decision to set aside the order permitting service of the proceedings on MSD.

The appellants complain that the High Court judge failed to apply the correct test. They contend that Walsh J. did not lay down a test requiring that the claim has a substantial connection with Ireland; rather the test is whether the proceedings have no more than a tenuous connection with Ireland. They also submit that, in any event, there was no sufficient evidential basis for the judge to conclude that the proceedings lacked the necessary connection with this jurisdiction.

35. As far as the EU Trade mark Regulation is concerned, it should be recalled that, as summarised above, the respondents, in their notice of motion, sought an order pursuant to Art. 136(1)(a) of EU Trade mark Regulation declining jurisdiction in respect of the claim of trade mark infringement against MSD Ireland. In the alternative, an order was sought under Art. 136(1)(b) staying that claim. The High Court considered a number of relevant authorities on these provisions (or their predecessors) including the decision of the Court of Justice in the Merck case. However, when the judge came to set out his conclusions, he dealt solely with Art. 136(1)(b). He did not express any view in relation to the application under Art. 136(1)(a) but, in para. 128(1) of his judgment, he said: “it seems to me that the present case comes within Art. 136(1)(b)” and in para. 129, he made an order pursuant to Art. 136(1)(1b) staying the trade mark infringement claim against MSD Ireland pending the ultimate determination of the proceedings in Germany.

36. At an earlier point in his judgment, the judge had had referred, in para. 20, to Recital

32 to the EU Trade mark Regulation and had noted that the recital “affirms the high priority given to the unitary nature of EU trade marks and the need for this not to be undermined by inconsistent decisions by national courts”. In the course of his review of relevant case law, he also referred, in para. 58, to the view expressed by the Advocate General in paras. 37 to

46 of his opinion in the Merck case to the effect that, for the purposes of Art. 109(1) of the predecessor Regulation, a parent and subsidiary could be considered to be the same party. In para. 46 of his opinion, the Advocate General had expressed the view that “in circumstances such as those of the present case, two parallel actions for infringement, one brought against the parent company and the other against that same company and its subsidiary, must be regarded as proceedings between the same parties where the actions relate to the use of the same sign by economically connected entities …”. Having quoted from the Advocate General’s opinion, the High Court judge noted that “The same situation appears to me to present here”. Thus, when one reads the judgment as a whole, it appears to be the case that the High Court judge took the view that, for the purposes of Art. 136(1)(b), the parties to the infringement of trade marks action in Ireland (namely Merck Germany as plaintiff and MSD Ireland as defendant) should be considered to be the same parties as the respective Merck and MSD entities who are party to the pre-existing German proceedings, even though MSD Ireland was not a party to the German proceedings which were between Merck Germany as plaintiff and Merck & Co. Inc. and MSD Corp. as defendants. However, the judge did not spell out why he was of the view that the other requirements of Art. 136(1)(b) were satisfied. Neither did he explain why he believed that he should exercise his discretion to stay the proceedings under that provision save that it would appear from his reference to Recital 32 that he was concerned that, absent a stay, there was a risk of irreconcilable judgments arising from parallel proceedings in Ireland and Germany.

37. In setting out his conclusions, the judge did not address the applications made under either Art. 29 or Art. 30 of the Recast Brussels Regulation. However, he did review some of the relevant case law relating to those provisions (or their predecessors) including Case C-144/86 Gubisch Maschinenfabrik v. Palumbo (ECLI:EU:C:1987:528), Case C-406/92 The Tatry (ECLI:EU:C:1994:400) Websense International Technology Ltd. v. ITWAY SpA [2014] 2 I.R. 485 and Easy Rent a Car Ltd. v. Easygroup Ltd. [2019] 1 W.L.R. 4630. While these cases are reviewed in the High Court judgment, the stay imposed by the judge was not made under either Art. 29 or Art. 30. Instead, the judge made an order under the inherent jurisdiction of the High Court staying the balance of the proceedings against MSD Ireland pending the determination of the proceedings in Germany. As I have already mentioned, although the respondents’ application invoked the inherent jurisdiction of the High Court, no argument was made to the High Court in relation to the High Court’s jurisdiction to stay proceedings before it pending the determination of the proceedings in Germany. The appellants complain that the High Court judge did not provide any reason or explanation for taking this course and their counsel drew attention to the decision of the Supreme Court in Doyle v. Banville [2018] 1 I.R. 505 which makes clear that a party to litigation is entitled to a sufficiently reasoned judgment so as to enable that party to know why the case has been won or lost. Nonetheless, in response to a question from the Court, counsel confirmed that the appellants do not seek to have the matter remitted to the High Court for rehearing.

38. In my view, the High Court judge fell into error in basing his decision to grant a stay on the inherent jurisdiction of the Court. It is true to say that the High Court, as part of its inherent jurisdiction, has the power to stay one set of proceedings to enable another set of proceedings to be determined first. It is also the case that this applies even where the latter set of proceedings is pending in a foreign jurisdiction. The position was explained as follows by Clarke J. (as he then was) in Kalix Fund Ltd. v. HSBC Institutional Trust Services (Ireland) Ltd. [2010] 2 I.R. 581 at p. 594: “Perhaps a closer analogy to the circumstances with which I am faced in these proceedings can be found in those cases where proceedings in one jurisdiction are stayed because there are already in being proceedings in relation to the same subject matter in another jurisdiction. Proceedings may be stayed where those latter proceedings are at a more advanced stage, and where other factors that may be relevant in determining which proceedings ought progress to trial favour the alternative jurisdiction: see for example, Reichhold Norway A.S.A. v. Goldman Sachs [2000] 1 W.L.R. 173, and Racy v. Hawila [2004] EWCA Civ. 209, (Unreported, Court of Appeal, 18th February, 2004). The underlying rationale behind those cases is the understandable desire on the part of courts in all jurisdictions to avoid a situation where there may be conflicting decisions on the same issue. In those circumstances it is highly undesirable that two courts in two separate jurisdictions should have to consider the same specific question with the consequent risk of differing decisions. Likewise, there may be circumstances where two different courts, within the same jurisdiction, may have to consider how best to deal with competing litigation which has been properly commenced in the respective courts ….”

39. The concern identified by Clarke J. in that passage to avoid conflicting decisions in two jurisdictions appears, similarly, to have animated the approach taken by the High Court in this case. However, it is important to recall that the issues in the present case arise against the backdrop of parallel proceedings in two Member States of the European Union and that, in such circumstances, the first port of call for a Court should be to consider whether there are any binding provisions of EU law governing the allocation of jurisdiction as between the two Member States in question. Even in a non-EU context, it is clear that the inherent jurisdiction of the court should not be invoked where there is a satisfactory and existing regime available for dealing with the issue under procedural law. In Lopes v. Minister for Justice and Equality [2014] 2 I.R. 301, Clarke J., in the Supreme Court, explained the position in this way:

“It is important to emphasise that the inherent jurisdiction of the court should not be used as a substitute for, or means of getting round, legitimate provisions of procedural law. That constitutionally established courts have an inherent jurisdiction cannot be disputed. That the way in which the ordinary jurisdiction of those courts is to be exercised is by means of established procedural law including the rules of the relevant court is also clear. The purpose of any asserted inherent jurisdiction must, therefore, necessarily, involve a situation where the court enjoys that inherent jurisdiction to supplement procedural law in cases not covered, or adequately covered, by procedural law itself. An inherent jurisdiction should not be invoked where there is a satisfactory and existing regime available for dealing with the issue under procedural law, for to do so would set procedural law at nought.”

40. Thus, quite apart from the fact that the inherent jurisdiction of the Court never featured in the arguments of the parties in the High Court, it seems to me that the High Court judge fell into error in invoking that jurisdiction without first examining whether the issues before him were capable of being decided on the basis of the express provisions of EU law on which the respondents relied and which had been argued before him. However, that finding does not resolve the issues to be determined on this appeal. The appellants’ appeal in respect of the other aspects of the respondents’ application remain to be decided together with the cross-appeal of the respondents (as described further below).

The issues to be determined on this appeal

41. In their notice of appeal, the appellants seek an order setting aside the High Court order made under O.12, r. 26 and they ask the Court instead to make an order refusing the respondents’ application under that rule and refusing the application to strike out the claims for breach of contract against MSD. In addition, the appellants seek an order setting aside the order made under Art. 136(1)(b) of the EU Trade Mark Regulation and refusing the respondents’ application for a stay of the proceedings whether pursuant to that provision or under either Art. 29 or Art. 30 of the Recast Brussels Regulations. As noted above, they also seek an order setting aside the order made under the inherent jurisdiction of the High Court.

42. In response, in Part 2 of their notice, the respondents identify a number of additional grounds on which they contend that the decision of the High Court should be affirmed. In particular, they contend that the decision to stay the proceedings should be affirmed on the grounds that there is a risk of irreconcilable judgments in these proceedings and in the proceedings pending in Germany and that the requirements of Art. 30 of the Recast Brussels Regulation are satisfied. They also maintain that the decision to decline jurisdiction over the breach of contract claim against MSD should be affirmed on the grounds that they have stated insufficient particulars to enable the Court to exercise discretion in favour of service out of the jurisdiction. They further contend that the decision should also be affirmed on the grounds that it could not reasonably appear to the Court, based on the evidence before the High Court, that the breach of contract claim against MSD is a proper one for service out of the jurisdiction.

43. In their notice, the respondents also sought to make the case that the appellants do not have a good cause of action against MSD for breach of contract in accordance with the “good arguable case” test set out in the applicable law. However, that argument was not pursued at the hearing. In those circumstances, it will be unnecessary to consider that issue in this judgment.

44. The respondents’ have cross appealed in relation to two issues. First, they contend that an order should have been made by the High Court under Art. 136(1)(a) of the EU Trade Mark Regulation in respect of the claim of trade mark infringement asserted by Merck Germany against MSD Ireland. Second, they contend that an order should have been made under Art. 29(3) of the Recast Brussels Regulation declining jurisdiction in respect of the claims of trade mark infringement and/or passing off against MSD Ireland.

45. Having regard to the terms of the notice of appeal and the cross-appeal, it follows that each of the individual aspects of the application made by the respondents in February 2024 fall to be considered on this appeal. Logically, it makes sense to address them in the following order:

(a) The appellants’ appeal in respect of the order setting aside of notice of the summons on MSD and striking out the proceedings against it;

(b) The respondents’ cross appeal in respect of Art. 136(1)(a) of the EU Trade Mark Regulation;

(c) The appellants’ appeal against the order made under Art. 136(1)(b) of the EU Trade Mark Regulation staying Merck Germany’s claim in respect of the alleged infringement by MSD Ireland of the Irish trade marks;

(d) The cross-appeal by the respondents under Art. 29 of the Recast Brussels Regulation;

(e) The contention by the respondents that the stay granted by the High Court should be affirmed on the grounds that the requirements of Art. 30 of the Recast Brussels Regulation have been satisfied.

46. While each of those issues falls to be considered, the issues can be grouped into two categories: (i) those that relate to the applicable principles governing Order 11 applications and (ii) those that relate to the relevant provisions of EU law governing how parallel proceedings in two EU Member States should be managed.

The appeal against the order setting aside service of notice of the summons on MSD

47. In order to address this aspect of the appeal, it is necessary to keep in mind three aspects of the provisions of O. 11, as it stood at the time of the application under O. 11, r.

1(e)(iii), namely:-

(a) Order 11, r. 2 which applied to all applications under O. 11 and which provides:- “Where leave is asked from the Court to serve a summons or notice thereof under rule 1, the Court to whom such application shall be made shall have regard to the amount or value of the claim or property affected and to the comparative cost and convenience of proceedings in Ireland, or in the place of the defendant’s residence …”

(b) Order 11, r. 5 which also applied to all applications under O. 11 and which provided:- “Every application for leave to serve a summons or notice of a summons on a defendant out of the jurisdiction shall be supported by affidavit, or other evidence, stating that in the belief of the deponent the plaintiff has a good cause of action, and showing in what place or country such defendant is or probably may be found, and whether such defendant is a citizen of Ireland or not, and where leave is asked to serve a summons or notice thereof under rule 1 stating the particulars necessary for enabling the Court to exercise a due discretion in the manner in rule 2 specified; and no leave shall be granted unless it shall be made sufficiently to appear to the Court that the case is a proper one for service out of the jurisdiction under this Order.”

(c) Order 11, r. 1(e) which governs contractual claims and which provides: “1. Provided that an originating summons is not a summons to which Order 11A applies, service out of the jurisdiction of an originating summons or notice of an originating summons may be allowed by the Court whenever: …

(e) the action is one brought to enforce, rescind, dissolve, annul, or otherwise affect a contract, or to recover damages or other relief for or in respect of the breach of a contract

(i) made within the jurisdiction; or

(ii) made by or through an agent trading or residing within the jurisdiction on behalf of a principal trading or residing out of the jurisdiction; or

(iii) by its terms or by implication to be governed by Irish Law, or is one brought in respect of a breach committed within the jurisdiction of a contract wherever made, even though such breach was preceded or accompanied by a breach out of the jurisdiction which rendered impossible the performance of the part of the contract which ought to have been performed within the jurisdiction”

48. On an application under O. 11, the applicant bears the burden of demonstrating a number of matters. First, the applicant must demonstrate that the case falls within one of the categories under O. 11, r. 1. As noted above, in this case, the appellants relied on O.11, r. 1(e)(iii) on the basis that a number of the alleged breaches of contract occurred in this jurisdiction. It is clear from the judgment of Fennelly J. in Analog Devices, at p. 282, that it is sufficient that the O. 11 applicant demonstrates that there is a good arguable basis that the claim falls within one of the O. 11, r. 1 categories albeit that he cautioned that ““it must be borne in mind that the issue of jurisdiction is being determined irrevocably and that a foreign defendant is being summoned involuntarily before our courts. Therefore, I believe that, though disputes of fact cannot always be satisfactorily resolved on affidavit, the court must look at the matter carefully. It is not a case where the applicant's allegations must be presumed to be true. The foreign party’s affidavit evidence must also be considered.”

49. Second, the applicant must address the basis upon which it is contended that it has a good cause of action against the intended defendant. In this context, it is now well settled that the applicant is required to put forward sufficient evidence to establish that it has a case which is reasonably capable of being proven. The Supreme Court has described this is as a “low threshold”. The position was explained as follows by Clarke J. (as he then was) in Irish Bank Resolution Corporation Ltd. v. Quinn [2016] 3 I.R. 167 at p. 214 -215:

“53. … In my view the trial judge was completely correct to suggest that it would, at least in many cases, be inadvisable simply to take the statement of claim as being necessarily capable of proof. Rather, as the trial judge suggested, the court should come to a view as to whether it has been established that whatever is alleged may be reasonably capable of being proven in evidence to an extent that a judge might reasonably hold in favour of the plaintiff. It is not necessary for a plaintiff to establish, on affidavit evidence, a prima facie case. Rather the plaintiff is required to put forward sufficient evidence on affidavit to meet the test identified by the trial judge which is that its case is, both on the law and the facts, reasonably capable of being proven.

54. The issue, at the stage of an application for leave to serve outside the jurisdiction or to set aside such leave, is simply whether it is appropriate to bring the defendant to this jurisdiction to answer the claim. The low barrier is designed to exclude imposing on defendants the obligation to come to Ireland to defend cases which have no prospect of being capable of being proven. The bar needs to be seen in the light of that underlying requirement. In my view the trial judge was entirely correct in his approach in that regard.

55. For like reasons it seems to me that the arguments raised concerning the weight to be attached to the evidence put forward respectively by the plaintiff and the defendant and the absence of an opportunity to test the plaintiff’s evidence are also misplaced. The overall test is as I have described it. The question of whether that test is met does not involve attaching weight to differing evidence or, indeed, argument. It simply involves determining whether a very low threshold has been met by the plaintiff …

56. Not alone was there no necessity for the trial judge to resolve any questions of fact for the purposes of this application, any purported resolution would have been entirely irrelevant. The only issue was as to whether IBRC had demonstrated that it had a case which was reasonably capable of proof.”

50. Although the respondents have argued that the case made by Merck Germany against MSD has only a tenuous connection with Ireland, the respondents, at the hearing of this appeal, did not pursue an assertion made in their respondents’ notice to the effect that the appellants had failed to establish a good arguable case in respect of the breach of contract claim against MSD. As noted in para. 43 above, it is therefore unnecessary to consider that issue for present purposes.

51. Third, the applicant for the order must identify whether the intended defendant is or is not a citizen of Ireland. This is necessary in order for the court to determine whether the summons itself or notice of the summons should be served. As O. 11, r. 8 makes clear, the latter is the course that must be taken where the defendant is not a citizen or is not known to be a citizen.

52. Fourth, and most relevantly for present purposes, the applicant for an order under O.

11 must provide sufficient material to enable the court to exercise its discretion under rule 2 which, as the terms of that rule make clear, requires the court to have regard to the amount or value of the claim or property affected and to the comparative cost and convenience of proceedings in Ireland, on the one hand, or in the courts of the defendants’ place of residence, on the other. The combined effect of rr. 2 and 5 was described as follows by Fennelly J. in the Supreme Court in Analog Devices at pp. 287-288:

“An order granting leave to effect service out of the jurisdiction is a matter of discretion. The court should grant leave only after careful consideration, not only of the existence of grounds upon which the court is empowered to grant leave, but of the appropriateness of the courts of this jurisdiction to try the case. The Latinism, ‘conveniens’, may, as has been pointed out is some of the cases, mislead; the proper translation is not ‘convenient’, but suitable or appropriate. This is illustrated, in particular, by O. 11, r. 5, which obliges the applicant to state ‘the particulars necessary for enabling the court to exercise a due discretion in the manner in rule 2 specified.’ The latter provision obliges the court to ‘have regard to the amount or value of the claim or property affected and to the comparative cost and convenience of proceedings in Ireland, or in the place of the defendant's residence... ‘ Rule 5 goes on to lay down a fundamental principle regarding the exercise of what has been stated to be a discretionary power. ‘... and no leave shall be granted unless it shall be made sufficiently to appear to the Court that the case is a proper one for service out of the jurisdiction under this Order.

These provisions, taken together, mean that the applicant must satisfy the court, i.e. has the burden of proving, at the ex parte stage, that Ireland is the forum conveniens. This means, according to Lord Goff of Chieveley in Spiliada Maritime Corporation v Consulex Limited [1987] 1 A.C. 460, at 480. ‘the forum in which the case can be suitably tried for the interests of all the parties and for the ends of justice.’ Lord Goff had reviewed a range of dicta on the issue, some emphasising the ‘exorbitant’ character of the jurisdiction and some (older cases) the annoyance and inconvenience for a foreigner at being brought to contest proceedings in England. Lord Goff himself found the word ‘exorbitant’ to be ‘an old-fashioned word which carries perhaps unfortunate overtones’. He also said that the defendant’s place of residence may be no more than a tax haven. It seems to me that the dictum of Lord Wilberforce, in Amin Rasheed Shipping Corporation v Kuwait Insurance Co. [1984] A.C. 50, expresses a correct balance. He said (at page 72 of the report):

‘The intention must be to impose upon the plaintiff the burden of showing good reasons why service of a writ, calling for appearance before an English court, should, in the circumstances, be permitted upon a foreign defendant. In considering this question the court must take into account the nature of the dispute, the legal and practical issues involved, such questions as local knowledge, availability of witnesses and expense’”.

53. It is clear from the provisions of O.11, rr. 2 and 5 and from the very clear guidance given by the Supreme Court in Analog Devices that a party seeking an order for service out of the jurisdiction under O. 11 must address, in its evidence supporting the application, the relevant factors which will enable the court to determine whether Ireland or the place of residence of the intended defendant is the more appropriate jurisdiction to hear and determine the claim sought to be made against the proposed defendant. The appropriateness of Ireland as a forum will be considered from the perspective of both parties. Lord Goff made that clear (in the passage quoted by Fennelly J.) when he said that the applicant must satisfy the court that the chosen jurisdiction is “the forum in which the case can be suitably tried for the interests of all the parties and for the ends of justice”

54. In this context, it seems to me that the High Court judge expressed the position correctly where he noted, in para. 19 of his judgment, that it was necessary in the present case for the appellants to place evidence before the court addressing the position in respect of both Ireland and New Jersey The express terms of O.11, rr. 2 and 5 clearly required the appellants to address the comparative cost and convenience of proceedings in Ireland and in New Jersey where MSD is based. On the other hand, it seems to me that the trial judge went somewhat too far when he suggested, in para. 91 of his judgment, that, for the purposes of

O. 11, Merck Germany was required to satisfy the Court that “New Jersey is not an appropriate place for proceedings”. In my view, that does not represent the correct approach. Instead, the court must be satisfied that, on the basis of the criteria set out in O. 11, rr. 2 and 5, Ireland is the forum in which the breach of contract claim made against MSD can be suitably tried in the interests of both sides and in the interests of justice. One does not have to go so far as to demonstrate that New Jersey is not an appropriate forum; merely that, in the particular circumstances of the case, it is appropriate that the claim should proceed in Ireland. Depending on the evidence adduced, it is conceivable that New Jersey might be an appropriate forum but there might, nonetheless, be particular factors that make Ireland a more suitable venue for the hearing of the claim.

55. That said, it is, of course, necessary to consider, as the rules expressly envisage, the competing factors in relation to the suitability of the respective jurisdictions to hear and determine the claim. As I have previously mentioned, this requires evidence as to the comparative cost and convenience of proceedings in the respective competing jurisdictions. To paraphrase the provisions of O. 11, r. 5, this requires that the affidavit grounding the application under O. 11 should provide sufficient particulars to enable the court to exercise its discretion under O. 11, r. 2. In the ordinary way, such particulars will likely include sufficient detail as to the nature of the dispute, a description of any relevant legal or practical issues that may affect the suitability of one venue over another, a description of any factors that may increase the cost of litigation in one jurisdiction over the other, the identification of any issues that might, in one jurisdiction or the other, affect the ability of the parties to recover costs, details of any issues as to the availability of local knowledge or expertise or as to the availability (and possibly the compellability) of witnesses in the respective jurisdictions and any other details that may assist the court in identifying whether there is a sufficient basis to conclude that the case is a proper one to authorise service out of the jurisdiction.

56. In his judgment, the High Court judge expressed the view that the evidence regarding the cost and convenience of suing in Ireland as opposed to New Jersey was completely absent from the O. 11 affidavit in this case. That finding was challenged by the appellants on appeal but, in my view, when one examines the affidavits before the High Court (including those that were delivered in the course of the respondents’ application under O. 12, r. 26) the High Court judge was substantially correct in what he said. While there was some evidence about a small number of factors that might be said to support a conclusion that Ireland was an appropriate forum, there was (contrary to the express requirement imposed by rr. 2 and 5) no attempt made to address the position in respect of the suitability (or unsuitability) of New Jersey as a forum.

57. As noted in para. 18 above, the affidavit grounding the ex parte application under O.

11 was sworn on 26th July 2023 by Mr. Michael Finn (a solicitor in the firm of Bird & Bird acting on behalf of the appellants). As I have previously mentioned, Mr. Finn, in his affidavit, described in some detail the proceedings which have previously taken place in a significant number of jurisdictions around the world. In particular, he quoted extensively from the English High Court judgment of 2016 in relation to the effect of the 1970 co-existence agreement. In addition, he addressed the Merck brand and its reputation in Ireland and he described how information in relation to the business of the appellants can be found on a number of websites. He also referred briefly to sales and marketing campaigns, including some marketing activities promoting the Merck brand in Ireland.

58. In paras. 54 to 63 of his affidavit, Mr. Finn addressed the breach of contract claim asserted against MSD. It is clear from para. 55 of his affidavit that the appellants are seeking to hold MSD liable in contract not only for any use made by it of “Merck” in Ireland but also any use of “Merck” made by MSD Ireland. In that paragraph, he contended that the Merck name has been used by the respondents “individually or collectively”. In this context, it is important to keep in mind that the breach of contract claim was asserted solely against MSD but counsel for the appellants, in the course of his oral submissions to this Court, argued that use of the Merck name by employees of MSD Ireland in Ireland would be a breach of contract on the part of MSD itself in circumstances where MSD entered into the 1970 co-existence agreement on behalf of itself, its subsidiaries and affiliates. For this purpose, para. 1(a) of that co-existence agreement specifically defines “Merck & Co” as meaning not only “Merck & Co Inc” (the predecessor in title to MSD) but also its subsidiaries and affiliates.

59. Consistently with the case subsequently made in the statement of claim, Mr. Finn, in para. 55 of his affidavit identified the websites on which the respondents are alleged to have used the word Merck and also makes a similar allegation in relation to the use of the domain “@Merck.com” in email addresses. In para. 56 of his affidavit, Mr. Finn made the case that the websites in question specifically target persons in Ireland (two of the websites being registered Irish domains) and/or are accessible from Ireland. There are also some further examples of alleged use in paras. 58 and 59 of the affidavit. Mr. Finn then expressed the view in para. 61 of his affidavit that this use constitutes a breach of the 1970 co-existence agreement and he also expressed the view in para. 63 that the intended action as against MSD is founded on a breach of contract committed within the jurisdiction within the meaning of O. 11, r. 1(e)(iii) and he maintained that, for all the reasons set out previously, Merck Germany has a good cause of action against MSD.

60. As the High Court judge noted, there is no averment expressly dealing with the requirements of O. 11 rr. 2 and 5. However, counsel for the appellants argued that, for the purposes of an application under O. 11, it is not an essential proof that the deponent of the grounding affidavit expresses the belief that Ireland is the more appropriate or convenient forum. Counsel submitted that, in truth, that would be no more than a formulaic expression of view on the part of the deponent and that it would be quite wrong to suggest that an averment of that kind had any “talismanic quality”. Instead, he maintained that it is for the court to form its own evaluation as to whether Ireland is the appropriate forum (within the meaning of that term as explained in the Analog Devices case). For this purpose, counsel submitted that such an evaluation will hinge on the evidence before the court in relation to the “relevant connecting factors”. Counsel for the appellants further submitted that there was ample evidence in Mr. Finn’s affidavit in relation to the connecting factors which identified that Ireland was the appropriate forum to hear and determine the claim against MSD in respect of breach of contract.

61. There is considerable force in the argument made by counsel for the appellants that the view expressed by the deponent of an affidavit of this kind is not in any way determinative. It will always be a matter for the court to form its own view as to whether the evidence is sufficient to satisfy the requirements of O. 11, rr. 2 and 5 and in particular as to whether the evidence is sufficient to allow the court to conclude that Ireland is the appropriate forum to hear and determine the claim against the intended defendant. However, the rules require that appropriate evidence be placed before the Court to enable the court to reach a determination on those issues. That requirement of the rules is entirely consistent with the principle explained by Fennelly J. in Analog Devices that the plaintiff bears the burden of showing good reason why a claim against a foreign defendant should be litigated in Ireland rather than in the jurisdiction in which the defendant is domiciled or based.

62. From the appellants’ perspective, the difficulty is that while paras. 46 to 63 of Mr. Finn’s affidavit dealt with matters which are alleged to have taken place in Ireland, there is no consideration given in those paragraphs to the specific issue mandated by O. 11, r. 2, namely the comparative cost and convenience of proceedings in Ireland as against New Jersey, where MSD has its seat. The lack of evidence in relation to this issue is underlined by what was said by Mr. Finn in para. 62 of his affidavit where he addressed why the appellants do not believe they could pursue the claim against MSD in Germany. In that paragraph, Mr. Finn said:- “Furthermore, the Intended Plaintiffs believe and have been advised that, in the absence of a choice of forum clause in the 1970 Agreement, German courts would not have international jurisdiction on the grounds of contractual claims asserted by Merck against MSD LLC in relation to infringements in Ireland. …”. (Emphasis added)

63. Such an approach represents a rather lopsided view of the issue purely from the perspective of Merck Germany which is, of course, itself based in Germany. Crucially, any similar consideration of the position of MSD as a New Jersey corporation is entirely absent. No consideration is given in the affidavit at all to the convenience of proceedings against MSD in New Jersey. This is even more surprising in circumstances where there are already proceedings in being in New Jersey brought by MSD against Merck Germany. For example, no explanation is given as to why the claim made for breach of contract against MSD could not, conveniently, be pursued by way of counterclaim in the courts of New Jersey.

64. In paras. 64 to 67 of his affidavit, Mr. Finn addressed the trade mark infringement claim asserted against MSD Ireland. Curiously, in para. 64 of his affidavit, Mr. Finn stated that it is important to note that Merck Germany does not allege trade mark infringement against MSD. Yet, it appears from what he said in paras. 66 and 67 of his affidavit, that Merck Germany is relying upon some of the same facts ( including the use of email addresses with the domain “@Merck.com”) as are relied upon in the context of the breach of contract claim asserted against MSD. As Mr. Finn explained in para. 66 of his affidavit, the complaint made by the appellants is that, by using the sign, Merck, in the State, the Irish trade marks have been infringed. The case is expressly made that the sign used by MSD Ireland is “substantially identical with, or deceptively similar to, the Merck trade marks in relation to goods and services in respect of which the latter are registered.

65. In the course of his oral submissions to the Court, counsel for the appellants relied on the overlap between the trade mark infringement claim against MSD Ireland and the breach of contract claim against MSD as a further connecting factor that points to Ireland as the appropriate forum for the hearing of the case against MSD. There is certainly some overlap between both claims. However, in contrast to the case made against MSD in the statement of claim (in respect of which twelve particulars of breach of contract are alleged) there are only three species of activity which are alleged to constitute infringement of the Irish trade marks. This pattern is also reflected in what transpired in the English proceedings. At a late stage in those proceedings, an issue arose as to whether (i) MSD had breached an order previously made by the High Court of England and Wales restraining MSD from breaching the co-existence agreement by the use within the United Kingdom of the Merck trade mark or the use of the word Merck as a contraction of its corporate name or as a trade or business name and (ii) any of the defendants (including MSD) had infringed the U.K. trade marks by using the sign, Merck, in the course of trade in the United Kingdom. In his judgment on that issue ([2024] EWHC 820 (Ch) at p.124), Johnson J. included a very helpful table which lists those breaches which were established to his satisfaction and those which were not. The table shows that there was a total of 33 allegations of breaches of the co-existence agreement within the ambit of the previous order. In 24 of those cases, the same activity on the part of the defendants was also alleged to amount to an infringement of the U.K. trade marks. However, when it came to those activities which were found to breach the previous order, there were only seven instances of activity which amounted to both a breach of the coexistence agreement and an infringement of the trade marks. In contrast, there were 17 species of activity which were found to be a breach of the coexistence agreement alone.

66. It is also striking that no case was made by Mr. Finn in his affidavit that MSD was a proper party within the meaning of O.11, r. 1(h) to the action against MSD Ireland. Subject to complying with the remaining O. 11 requirements, that rule permits a foreign party to be joined as a defendant to proceedings in this jurisdiction where it is either a necessary or proper party to an action properly brought against some other person duly served within the jurisdiction. Plainly, it could not be said that MSD is a necessary party to the trade mark infringement claim which Merck has chosen to plead solely against MSD Ireland but, as the judgment of Fennelly J. in Analog Devices demonstrates, it is sufficient for the purposes of this rule that the intended defendant is a “proper party”. In that case, an insurance company based in the United States which had provided a separate insurance policy to the plaintiff to that provided by a sister Irish insurer, was held to be a proper party to the proceedings in Ireland against the latter. At p. 286, Fennelly J. explained that a party can be a proper party to proceedings against another even where the claims against them may be based on different torts. On the same page, he concluded that, while the policies were separate, they covered the same risk and he said that: “Economy and efficiency would demand that the facts of the complex set of events that occurred at the Raheen plant not be proved twice and that the expert evidence of both parties be given in one action. To hear the two actions before two different courts is to court the danger of inconsistent decisions.”

67. The fact that no similar case was made here that MSD is a proper party to the claim against MSD Ireland undermines the argument now made by counsel for the appellants about the suggested factual overlap between both claims. If the extent of the factual overlap is as significant as is now maintained, it is difficult to understand how no case was made by reference to O. 11, r. 1(h).

68. The last matter addressed in Mr. Finn’s affidavit was the passing off claim. In para.

68 of his affidavit, Mr. Finn explained that the passing off claim arises from MSD Ireland’s alleged use of the name and sign Merck in the State. In the same paragraph, Mr. Finn said that it is important to note that the appellants do not allege passing off against MSD. In para. 69, Mr. Finn maintained that the appellants have acquired a valuable good will and name in the trade mark Merck and in para. 70 of his affidavit he referred to three instances of confusion which he maintains have arisen as a consequence of MSD Ireland’s use of the name and sign Merck in the State. Thus, while the cause of action in passing off is a distinct tort with its own characteristics, the factual basis for it is very similar to that advanced in respect of infringement of the Irish trade marks. For that reason, I do not believe that, in the context of the O. 11 issue, the existence of the passing off claim against MSD Ireland adds anything of substance over and above the issues that arise from the existence of the trade mark infringement claim asserted against MSD Ireland.

69. That was the state of the evidence before the High Court when the Court made its order on 31st July 2023 giving leave to serve MSD out of the jurisdiction. That order was made, in accordance with the usual practice, on foot of an ex parte application. Following the entry of a conditional appearance, the application challenging jurisdiction was then brought by the respondents which was grounded on an affidavit sworn by Mr. James Holston, executive director and managing counsel of MSD, on 1st February 2024. In para.

64 of his affidavit, Mr. Holston highlighted that Mr. Finn had not addressed issues of cost and convenience in his affidavit grounding the O. 11 application. He also referred to a number of factors which he suggested show that the claim made against MSD had no more than an insubstantial connection with Ireland and he emphasised that proceedings are currently pending in the Federal District Court for the district of New Jersey brought by MSD against Merck Germany which relate directly to the meaning and effect of the 1970 co-existence agreement.

70. There were a large number of additional affidavits sworn in the course of the progress of the respondents’ challenge to jurisdiction in the High Court. However, the issue of the appropriate forum was addressed only very briefly by the deponents who swore affidavits on behalf of the appellants. In an affidavit sworn by Mr. Jonas Koelle, general counsel, trade marks for Merck Germany, on 5th March 2024, Mr. Koelle, rather surprisingly suggested, at para. 33, that there was no requirement to address the question of costs or convenience albeit that he added that the breaches of contract alleged by Merck Germany against MSD “demonstrate a pattern of behaviour in Ireland which, when coupled with MSD LLC’s insistence in the UK proceedings that the contract must be litigated on a country by country basis, entirely justifies the within proceedings being brought. Furthermore, the instances of breach of contract evidentially overlap with the trade mark infringement … rendering it wholly justifiable to litigate the issues in this jurisdiction”.

71. A number of observations arise in respect of this averment on the part of Mr. Koelle. In the first place, it is impossible to understand how Mr. Koelle could have been advised that there was no requirement to address questions of cost and convenience. Second, his reference to MSD’s insistence in the English proceedings that the contract must be litigated on a country by country basis is entirely belied by a consideration of the judgment of the Court of Appeal of England and Wales in 2017. As outlined in para. 11 above, Kitchin L.J. highlighted that Merck Germany had pleaded its case by reference to activities which took place solely within the United Kingdom. Kitchin L.J. drew attention to the fact that it was only after judgment had been given by the High Court in 2016 that Merck Germany sought an order on a worldwide basis. That said, Mr. Koelle does identify a connecting factor with Ireland, namely the fact that there is an element of evidential overlap between the claim in respect of breach of contract and the claim for trade mark infringement. But, crucially, Mr. Koelle says nothing about the comparative position as between Ireland and New Jersey. In addition, for the reasons outlined in para. 65 above, there is some doubt as to the extent of the evidential overlap.

72. The question of convenience is also briefly addressed in a second affidavit sworn by Mr. Finn on 19th April 2024. In para. 14, he suggested that the issue as to cost and convenience would be addressed by way of submission but he nonetheless gave some evidence in relation to the issue in paras. 15 to 17 of his affidavit. In para. 15 he maintained that the matter had been “amply addressed” in his first affidavit including in the description of breaches of contract occurring in the jurisdiction (such as the use of email addresses of employees of MSD in Ireland). In the same paragraph, he also said that it was relevant to note an averment made by Mr. Holston on behalf of the respondents to the effect that MSD operates through local subsidiaries in different jurisdictions and that all of the companies in the MSD group are closely economically linked. He added in para. 17 of his affidavit that he disagreed with Mr. Holston’s contention that the Irish courts do not constitute the appropriate forum for the purposes of the claims brought by the appellants and he concluded in that paragraph by saying “While it is more appropriately a matter for legal submissions, I say and believe that the hearing of the respective claims for the plaintiffs for trade mark infringement and breach of contract are properly within the jurisdiction of the Irish courts”.

73. It is puzzling that the appellants appear to have proceeded on the basis that they did not need to address, in any way, the position of New Jersey (i.e. the place were MSD has its seat) as a potential forum for the determination of the claim as against MSD and to adduce evidence of the comparative cost and convenience of proceedings as between Ireland and New Jersey. In my view, the failure by Merck Germany to address that issue on affidavit is fatal on an application of this kind. The requirements of O. 11, rr. 2 and 5 are not mere formal requirements. They are imposed to address the very important policy considerations arising from the comity principle identified by Fennelly J. in Analog Devices. While it would frequently be virtually impossible, at the outset of litigation, to provide any detailed evidence as to the quantum of costs that would be incurred in Irish litigation as opposed to litigation abroad, the affidavit grounding an application under O. 11 must provide sufficient detail to enable the Court to assess whether Ireland or the jurisdiction of the defendant’s domicile is the more appropriate forum for the determination of the dispute. That requires a consideration of the factors relevant to the appropriateness or otherwise of both fora, including any factors that may make it more costly to pursue litigation in one jurisdiction over the other. What is particularly troubling about the present case is that, not only was that evidence absent from the affidavit grounding the original ex parte application under O.

11 but that gap in the evidence was not cured during the course of the exchange of affidavits in advance of the inter partes hearing before the High Court judge whose decision is the subject of this appeal.

74. Counsel for the appellant sought to make the case that there is a parallel to be drawn between the circumstances of this case and the circumstances considered by this Court in O’Flynn v. Carbon Finance Ltd [2015] IECA 93. He argued that there is no substantive difference between the quality and extent of the evidence in that case and the evidence placed before the High Court in this case. It is important to consider the facts of the O’Flynn case. Proceedings were initially commenced in 2014 by two directors and shareholders of O’Flynn Construction Co Ltd. and three related companies against the first defendant and a number of partners in a firm of accountants (two of whom were based in London) seeking a declaration that the defendants had, as part of a premeditated plan instigated by the first defendant, put in train a series of enforcement action against the two plaintiffs and a number of companies in the O’Flynn Construction Group. They also sought damages for abuse of process and conspiracy arising from the presentation of a petition for the appointment of an interim examiner in respect of the companies which appointment was subsequently set aside.

75. At a later point in the proceedings, a large number of O’Flynn companies were added as co-plaintiffs and Blackstone, a US company which was the ultimate parent of the first defendant was added as a defendant in reliance on O. 11 , r. 1(f), which applies where the action is founded on a tort committed within the jurisdiction. Blackstone’s application to set the order aside was dismissed by the High Court and that decision was upheld by the Court of Appeal. In order to understand the basis for the decision in that case, it is necessary to set out at some length the key passages from the judgment of the Court of Appeal which runs from para. 111 to 123 as follows:

“111. As to second question, namely whether the plaintiffs have established whether this jurisdiction is the appropriate forum for the resolution of the conspiracy claims, Blackstone has submitted that the onus stated by Fennelly J. in Analog Devices BV v. Zurich Insurance Company [2002] 2 IR 272 at 287 to be upon the plaintiff in these applications to satisfy the Court as to ‘the appropriateness of the courts of this jurisdiction to try the case’, has not been discharged.

112. It has been submitted that for the Court to be so satisfied the plaintiff at a minimum would have to know the essential elements of the case being made, the nature of the factual disputes between the parties, and the evidence required for each party to make out its case. It is submitted that the question of cost and convenience must be considered from the point of view of both parties and not just the plaintiff, when considering whether it is reasonable that a party outside this jurisdiction should be required to come to this jurisdiction in order to defend a claim being made against it, rather than that such proceedings should preferably be brought in the defendant’s own jurisdiction – in this case the state of New York. In support of its submission in this regard Blackstone has referred to the judgment of Kelly J. in Yukos Capital Sarl v. Oao Tomskneft VNK [2014] IEHC 115 where at para. 99 thereof he stated:

‘The wording of the relevant rules and the case law which I have quoted lead me to the conclusion that in considering both comparative cost and convenience and propriety, I have to have regard to the interests of both parties to the litigation and not merely the applicant’. [Emphasis added]

113. Again, this Court considers this to be correct in so far as it goes, in the sense that Yukos was decided on very particular facts, and where the only proposed defendant was one outside the jurisdiction, which is in contradistinction to the present case, in which there were in existence already proceedings in this jurisdiction against, inter alia, a company which is part of the Blackstone family of companies in the U.K and other companies in this jurisdiction, arising out of the same matrix of facts which give rise to the claims sought to be litigated against Blackstone in these proceedings.

114. The need to ‘have regard to the interests of both parties to the litigation’ involves a weighing of those competing interests to determine whether the interests of Blackstone which are said to favour allowing the claims to be litigated separately against it in New York outweigh the interests of the plaintiffs who seek a determination in this jurisdiction along with their claims arising out of essentially the same factual matrix which will be heard in any event in this jurisdiction.

115. Blackstone correctly points to the absence of any sworn evidence in the grounding affidavit which was before O’Malley J. on the 26th August 2014 relating to the comparative cost of litigating these claims here as opposed to in New York, save for what is stated in paragraph 24 of the affidavit of Mr O’Flynn which grounded that application as follows:

‘The trial of issues arising as between the Plaintiff’s and Additional Defendants can most cost effectively and fairly be disposed of within the present proceedings. Were this Honourable Court not to give leave pursuant to Order

11 of the Rules of the Superior Court for the issue and service of proceedings as against the Additional Defendants, the same issues (including the question of conspiracy between Carbon and the Additional Defendants) would, in effect, have to be tried twice in different jurisdictions giving rise to unnecessary and/or wasted cost and a risk of inconsistent verdicts on these issues’.

116. For completeness, the court refers also to paragraph 25 of the same affidavit where the deponent states, inter alia, that:

‘The claims against Blackstone are also closely connected to the existing proceedings against Carbon …’.

117. That is the extent of what was before O’Malley J. On 26th August 2014 relating to the question of cost and convenience of having the matters determined in this jurisdiction. Blackstone say that this is not enough and that the evidence must go further and address what evidence needs to be adduced, the witnesses who would need to be called, and questions of cost and convenience relating thereto in this jurisdiction as opposed to in New York.

118. The plaintiffs in their submissions have referred also to Order 11, rules (2) and (5) RSC in resisting this appeal. Rule (2) thereof provides:…

119. Order 11, rule (5) provides:…

120. When considering these rules in his judgement in Analog Devices BV v. Zürich Insurance, Fennelly J. stated the following: …

121. The terms in which Order 11, rule (5) RSC is worded is important. The burden on a party on such an application to serve out of the jurisdiction is to ensure that it is ‘made sufficiently to appear to the court that the case is a proper one for service out of the jurisdiction under this Order’. As seen from rule (2) thereof the Court must also have regard to, inter alia, ‘the comparative cost and convenience of proceedings in Ireland, or in the place of the defendant’s residence’. These factors will assist the Court in determining ‘the forum in which the case can be suitably tried for the interests of all the parties and for the ends of justice’.

122. There will be cases where it may be necessary to establish on affidavit as accurately as reasonably possible the comparative cost of bringing the proceedings in one jurisdiction or another, and that exercise may involve an examination by the Court of what witnesses will be required, their place of habitual residence, the cost of their attendance in one jurisdiction compared to the other, perhaps also the speed with which the proceedings may be determined in each competing jurisdiction, and so on. 123.In the present case, such a detailed exercise was unnecessary in circumstances where there were already in existence proceedings between the same plaintiffs and a number of defendants for whom an order under Order 11 RSC was not required to be made, and therefore in respect of whom the claims would in any event fall to be determined in this jurisdiction. In such a case, the averment by Mr O’Flynn which is seen at paragraph 24 of his grounding affidavit was in the view of this Court sufficient to satisfy the requirement of Order 11, rule (2) to “[make it] sufficiently to appear to the court that the case is a proper one for service out of the jurisdiction under this Order”. Indeed, it is notable that in his affidavit grounding Blackstone’s application to discharge the order of O’Malley J, John Finley at paragraphs 17 – 21 refers only to the omission by Mr O’Flynn in his affidavit grounding the ex parte application of any evidence or material regarding the comparative cost or convenience of prosecuting the proceedings against Blackstone in Ireland or in New York, and the omission of any information about the cost or convenience for Blackstone of defending the proceedings in Ireland rather than in New York. Nowhere in those paragraphs does he put forward any evidence to contradict the contents of paragraph 24 of Mr O’Flynn’s grounding affidavit.” (Emphasis added.)1

76. In my view, that case can be readily distinguished. There, some attempt was made to address the requirements of O. 11, rr. 2 and 5 even though it was in quite general terms. The relevant passage from the grounding affidavit sworn by the first named plaintiff Mr. O’Flynn is quoted in para. 115 of the judgment of the Court. Secondly and more importantly, it is clear from para. 123 of the judgment that the Court was of the view that, in the specific In circumstances where they have already been quoted in this judgment, the relevant text of O. 11, rr. 2and 5 and the extract from the judgment of Fennelly J. in Analog Devices quoted by the Court have been omitted from paras. 118 to 120 of this passage . circumstances of that case, it was unnecessary for the plaintiff to provide detailed evidence in relation to the respective suitability of the courts of Ireland, on the one hand, or the courts of New York, on the other.

There were a number of crucial factors in that case which pointed overwhelmingly to Ireland being the appropriate jurisdiction to hear and determine the appellants’ claim. In the first place, there were, prior to the joinder of the US company which challenged jurisdiction, a large number of defendants who were already properly sued in this jurisdiction. Second, the principal subject matter of the action related to previous proceedings which had taken place in the High Court namely the ex parte application made by a number of the defendants to appoint an interim examiner to some of the companies in the O’Flynn Construction Group.

The order made by the High Court appointing the interim examiner was subsequently set aside on the application of the companies concerned and the proceedings in which Blackstone was named as a defendant (as the ultimate parent of the parties who had presented the petition for the appointment of the examiner) were brought to recover damages for abuse of the court process (i.e. abuse of the process of the High Court of Ireland) and conspiracy arising from the earlier examinership proceeding. Third, examinership is an entirely Irish statutory construct.

Against that backdrop, Ireland was, very obviously, the appropriate forum to hear and determine the claim as against all defendants including the U.S. corporation. On the very particular facts of that case, it was plainly fanciful to suggest that New York was the appropriate forum to hear the claim. The courts of that jurisdiction would have to be educated as to the concept of examinership and the extensive statutory provisions and case law on the subject. Even more importantly, it would clearly make no sense that the courts of a foreign jurisdiction should be asked to address an issue as to whether an application made to an Irish Court constituted an abuse of the process of that Court.

The High Court here was manifestly the most suitable forum to hear that claim from the perspective both of the ends of justice and the parties’ respective interests.

77. Accordingly, O’Flynn does not assist the appellants. The most that can be said in this case is that there is some element of factual overlap between the activities giving rise to the breach of contract claim asserted by Merck Germany solely against MSD and the infringement of trade mark claim which Merck Germany has elected to pursue solely against MSD Ireland. However, the fact remains that, contrary to the express provisions of the rules and the principles explained in Analog Devices, the deponents of the affidavits sworn on behalf of the appellants have not addressed the comparative position as between New Jersey and Ireland. Critically, they have not addressed why it is more convenient from both parties’ perspective to pursue the breach of contract claim in Ireland rather than in New Jersey. This gap in their evidence is all the more significant in circumstances where there are already proceedings in being between the parties to the breach of contract claim in the courts of New Jersey. That raises the obvious question as to whether or not it might make more sense to pursue the breach of contract claim in the courts of New Jersey where MSD is domiciled. In this context, there is nothing in the evidence before this Court to suggest that the courts of New Jersey would not be able to determine the claim against MSD in relation to alleged breaches of contract in all parts of the world. If Merck Germany is correct in its assertion that, under the 1970 co-existence agreement, its rights against MSD extend to the activities of MSD’s subsidiaries and affiliates, an order against MSD enforcing the performance of the obligations under the agreement, issued by a court of the place where it has its seat, would likely bring to an end the impugned activities not just of MSD itself but also of its subsidiaries and associates around the world. Thus, in the absence of any evidence to the contrary, New Jersey would, on a prima facie basis, appear to be the most appropriate forum in which to pursue the breach of contract claim against MSD. Of course, it may well be the position that there exist cogent reasons which point towards Ireland as a more suitable forum but the problem for the appellants is that they have failed to address their minds to that in the evidence which they have chosen to place before the High Court.

78. Thus, in contrast to the O’Flynn case, it is not immediately obvious that Ireland is the appropriate forum to hear and determine the claim against MSD. However, in the course of the hearing of the appeal, counsel for the appellants also sought to argue that the order made by the High Court would lead to fragmentation of the claims made against MSD under the contract and the claims made against MSD Ireland in respect of trade mark infringement and passing off. It is true that fragmentation is a factor that, in an appropriate case, may weigh heavily in the balance. In the IBRC case, Clarke J., at p. 223, referred to a passage from Dicey, Morris & Collins, The Conflict of Laws, (15th ed., 2012) at p.553 where the authors note that, in a relevant case, an overall adjudication of the appropriateness of a forum requires the Court to consider “whether the claim is part of a larger overall dispute which would be damaged by being fragmented” but he added that, while “the fact of fragmentation can be important does need to be emphasised, I would not elevate it to a principle which has any greater application than the circumstances of the individual cases might warrant.” On the facts of the IBRC case, Clarke J. held that fragmentation was a very important factor which pointed towards Ireland as the natural and convenient venue for the case against all of the defendants. In this case, counsel for the appellants argued that the order made by the High Court leads to a highly undesirable fragmentation of the appellant’s claims and that this was particularly so in circumstances where the claim for infringement of the Irish trade marks could only be maintained in Ireland. Counsel emphasised that such a claim could not have been maintained by way of counterclaim in the New Jersey proceedings. In those circumstances, counsel suggested that a unitary trial of all issues in Ireland was in all parties’ interests.

79. At first sight, that argument might appear to have some traction. However, I do not believe that it withstands analysis. In the first place, an argument about fragmentation does not sit easily with Merck Germany’s approach to date. There have already been multiple proceedings around in a number of jurisdictions around the world. The approach taken by Merck Germany in its proceedings in England & Wales is very striking in this context. Although it appears from the judgments delivered in those proceedings that there was nothing to prevent Merck Germany from advancing its contractual claim in those proceedings on a worldwide basis, it chose to plead and run its case solely in respect of the defendants’ activities in the United Kingdom. It was only after it tested the waters and received a favourable initial decision that it decided to change tack and sought to persuade the English Court that relief should be granted on a worldwide basis. As explained in para.

11 above, both the High Court and the Court of Appeal of England and Wales, unsurprisingly, dismissed that attempt. Had Merck Germany pursued a claim on a worldwide basis in the first place, it is reasonable to conclude that much of the plethora of subsequent litigation around the world could have been avoided: including the claims now sought to be ventilated in these proceedings. It is inconceivable that, had the English Courts made an order on a worldwide basis against MSD or its predecessor in title, such an order would not have been enforceable against MSD under the ordinary principles of private international law and it is unrealistic to think that it could have been ignored by MSD’s subsidiaries. Moreover, if Merck Germany is correct in its contention as to the meaning and legal effect of the co-existence agreement, MSD (or its predecessor in title) would be liable under the agreement for any breaches of it by its subsidiaries or associated companies.

80. Second, there is an element of the tail wagging the dog about this aspect of Merck Germany’s argument. It appears from the statement of claim that the principal claim made in these proceedings is the contractual claim asserted against MSD. As previously noted, the list of particulars of breaches in respect of that element of the claim is considerably more extensive than the very few particulars that are provided in respect of either the claim in respect of trade mark infringement or the claim in passing off. The respondents also maintain that they have ceased the use of the email addresses in Ireland which was one of the principal complaints made in the particulars of trade mark infringement. While that cannot be taken as proven at this point, it is unlikely that MSD Ireland could plausibly retreat from that position at a later stage of the proceedings.

81. Third, the concern about fragmentation does not come close to demonstrating anything like the same degree of connection to Ireland that existed in the O’Flynn case. In those circumstances, it cannot plausibly be suggested that the requirements of O. 11, rr. 2 and 5 do not apply in all of their force. It follows that, in the evidence before the High Court , it was necessary for the appellants to specifically address the issue as to which of Ireland or New Jersey is the more appropriate forum in which to pursue the contract claim. The absence of that evidence means that Merck Germany has failed to discharge the burden of proof resting on them to establish that Ireland is the appropriate forum to hear and determine the claim.

Conclusion in relation to the appeal against the order setting aside service of proceedings on MSD

82. For all of the reasons outlined above, I am of the view that the appeal of the appellants on this issue should be dismissed. Although I differ in some respects from the reasoning of the High Court judge, I would affirm the orders made by the High Court (a) setting aside the order giving leave to serve the proceedings on MSD and (b) striking out the proceedings against MSD.

83. In the circumstances, it is unnecessary to address the second aspect of the appellants’ complaint in respect of the order setting aside service of the proceedings on MSD. As outlined in para. 34 above, the appellants contend that the High Court judge applied the wrong test. They contend that, in Grehan v. Medical Inc., Walsh J. did not lay down a test requiring that the claim in issue must have “a substantial connection” with Ireland; rather the test is whether the proceedings have “no more than a tenuous connection” with Ireland. They also submit that, in any event, there was no sufficient evidential basis for the judge to conclude that the proceedings lacked the necessary connection with this jurisdiction. I would merely observe, at this point, that the specific language used by Walsh J. should be kept in mind. As noted in para. 34 above, he said that it would not be appropriate to give leave to serve proceedings where the case only had a tenuous connection with this country on its facts and in terms of the governing law. He did not use the language of “substantial connection”. That said, it is by no means certain that Walsh J., in his judgment intended to lay down an additional requirement for an O. 11 application over and above the test prescribed by O. 11, rr. 2 and 5. If a case has no more than a tenuous connection with Ireland either in terms of the facts or the law, that would raise a fairly obvious issue as to whether Ireland is the appropriate forum to hear and determine the case.

The cross-appeal in respect of Art. 136(1)(a) of the EU Trade Mark Regulation

84. Up to now, the focus has been on the choice of fora as between Ireland and New Jersey. That was an issue governed by Irish law. Now, the focus shifts to a choice of forum as between Ireland and Germany. This issue is governed by EU law. Article 136(1) of the EU Trade Mark Regulation is concerned with how jurisdiction is to be allocated as between the courts of EU Member States where there are parallel actions for trade mark infringement in two Member States which fall within the ambit of the specific categories of infringement action described respectively in either Art. 136(1)(a) or Art. 136(1)(b).

85. As previously explained, there are, currently, two actions for trade mark infringement in existence in two Member States of the European Union, namely Merck Germany’s infringement proceedings against Merck & Co. Inc. and Merck Sharp & Dohme Corporation on foot (inter alia) of the EU word mark (the appeal in which is now pending in the Hanseatic Regional Court in Germany) and Merck Germany’s action for trade mark infringement against MSD Ireland in this jurisdiction. While MSD is also named as a defendant to those proceedings, the allegation of trade mark infringement is levelled solely at MSD Ireland.

86. Article 136 is headed: “Simultaneous and successive civil actions on the basis of EU trade marks and national trade marks” and it provides as follows: “1.Where actions for infringement involving the same cause of action and between the same parties are brought in the courts of different Member States, one seised on the basis of an EU trade mark and the other seised on the basis of a national trade mark:

(a) the court other than the court first seised shall of its own motion decline jurisdiction in favour of that court where the trade marks concerned are identical and valid for identical goods or services. The court which would be required to decline jurisdiction may stay its proceedings if the jurisdiction of the other court is contested;

(b) the court other than the court first seised may stay its proceedings where the trade marks concerned are identical and valid for similar goods or services and where the trade marks concerned are similar and valid for identical or similar goods or services. 2.The court hearing an action for infringement on the basis of an EU trade mark shall reject the action if a final judgment on the merits has been given on the same cause of action and between the same parties on the basis of an identical national trade mark valid for identical goods or services. 3.The court hearing an action for infringement on the basis of a national trade mark shall reject the action if a final judgment on the merits has been given on the same cause of action and between the same parties on the basis of an identical EU trade mark valid for identical goods or services. 4.Paragraphs 1, 2 and 3 shall not apply in respect of provisional, including protective, measures.”

87. As noted in para. 28 above, Art. 136(1)(a) is mandatory in effect. By its terms, the court is required to decline jurisdiction where a trade mark infringement claim is shown to fall within its terms. Against that backdrop, counsel for the appellants argued that the court must first decide the question as to whether relief is to be granted under Art. 136(1)(a). He submitted that the court cannot, as the High Court judge did, skip over Art. 136(1)(a) and go directly to Art. 136(1)(b) without first analysing the position with respect to Art. 136(1)(a). Having regard to the clear language of Art. 136(1)(a), I believe that counsel was plainly correct in that argument. It follows that one only gets to consider the possible application of Art. 136(1)(b) in respect of any aspects of the matter that do not fall within the ambit of Art. 136(1)(a).

88. For the purposes of Art. 136(1)(a), there is no dispute between the parties that the respondents bear the burden of establishing the existence of each of the criteria prescribed by it, namely:-

(a) The existence of actions for infringement involving the same cause of action in the courts of different Member States, one seised on the basis of an EU trade mark while the other seised on the basis of a national trade mark;

(b) The fact (if it be a fact) that both actions are between the same parties;

(c) The trade marks concerned must be identical; and

(d) The trade marks must be valid for identical goods or services.

89. Counsel for the appellants carefully took the court through each of the criteria prescribed by Art. 136(1)(1a) and submitted that none of them was satisfied in this case. The appellants do not, however, have to succeed in relation to each of these criteria. All the appellants need to do is to succeed in relation to one of them. For the reasons which I outline below I am of the view that the respondents have failed to establish that the infringement of trade mark proceedings in Ireland are between the same parties as the parties to the existing German proceedings. In the circumstances, I do not believe it is necessary to address the other criteria that must be satisfied.

90. There was no dispute between the parties that the “same parties” must be given an independent and autonomous meaning for the purposes of Art. 136(1)(1a). Similarly, there was no dispute between the parties that, for this purpose, the case law on Art. 29 of the Recast Brussels Regulation (previously Art. 21 of the Brussels Convention) applies.

91. The meaning to be given to “same parties” has been considered in two seminal cases determined by the Court of Justice namely Case C-406/92 “The Tatry” (ECLI:EU:C:1994:400) and Case C-351/96 Drouot Assurances v. Consolidated Metallurgical Industries (ECLI:EU:C:1998:342). In the former, an action was brought in the Netherlands by the owners of a Polish vessel “The Tatry” for a declaration that they were not liable to the owners of cargo carried by the vessel which became contaminated. Subsequently, proceedings were commenced in England by a number of cargo owners seeking damages against the vessel. While some of the cargo owners who were defendants in the Dutch proceedings were also plaintiffs in the English proceedings, they were not all precisely the same. In response to a reference by the English courts, the Court of Justice stressed that Art. 21 of the Brussels Convention required the national court to decline jurisdiction only to the extent which the parties to the proceedings before it were also parties to the Dutch proceedings. The Court made clear that Art. 21 did not prevent the proceedings from continuing between the other parties. The rationale for the Court’s decision is usefully set out at paras. 32 -35 of its judgment where the Court, having previously cited its judgment in Gubisch Maschinenfabrik v. Palumbo, explained the position as follows:- “32. The Court stressed in that judgment (paragraph 8) that Art. 21, together with Art.

22 on related actions, is contained in Section 8 of Title II of the Convention, a section intended, in the interests of the proper administration of justice within the Community, to prevent parallel proceedings before the courts of different Contracting States and to avoid conflicts between decisions which might result therefrom. Those rules are therefore designed to preclude, in so far as is possible and from the outset, the possibility of a situation arising such as that referred to in Article 27(3), that is to say the non-recognition of a judgment on account of its irreconcilability with a judgment given in a dispute between the same parties in the State in which recognition is sought.

33. In the light of the wording of Article 21 of the Convention and the objective set out above, that Article must be understood as requiring, as a condition of the obligation of the second court seised to decline jurisdiction, that the parties to the two actions be identical.

34. Consequently, where some of the parties are the same as the parties to an action which has already been started, Article 21 requires the second court seised to decline jurisdiction only to the extent to which the parties to the proceedings pending before it are also parties to the action previously started before the court of another Contracting State; it does not prevent the proceedings from continuing between the other parties.

35. Admittedly, that interpretation of Article 21 involves fragmenting the proceedings. However, Article 22 mitigates that disadvantage. That Article allows the second court seised to stay proceedings or to decline jurisdiction on the ground that the actions are related, if the conditions there set out are satisfied”.

92. Thus, under the Brussels regime, jurisdiction is to be declined by the second court seised in so far as the parties to both actions are the same and the cause of action is the same, but the declinature of jurisdiction will not affect the action in the second court seised in so far as there are other parties who are not the same as the parties to the action before the court first seised. It would appear to follow that the same principle applies to any additional causes of action which are invoked in the proceedings before the second court seised which do not coincide with the cause of action in the court first seised. Fragmentation of the claim made in the proceedings before the second court seised is not a basis to refuse to decline jurisdiction.

93. When that approach is translated to Art. 136(1)(a), it would appear to follow that the relevant parties to be considered are those who are party to the relevant trade mark infringement actions in both jurisdictions. The relevant parties to the German action for infringement are Merck Germany as plaintiffs and Merck & Co,. Inc. and Merck Sharp & Dohme as defendants, while those in this jurisdiction are Merck Germany as plaintiff and MSD Ireland as defendant. As MSD Ireland is not a party to the German proceedings, this raises an obvious issue as to whether it can be said that MSD Ireland is the same party as the defendants named in the German proceedings.

94. The Court of Justice subsequently returned to the issue of “the same parties” in the Drouot Assurances case. In that case, Drouot Assurances SA was a French insurance company. Along with a number of other parties, it brought proceedings in France in relation to the cost of refloating a barge which had foundered in the inland waters of the Netherlands in August 1989. Drouot was the insurer of the hull of the vessel and it had refloated the vessel at its own expense thereby enabling the cargo on board to be salvaged. Drouot’s proceedings in France were brought against the owner of the cargo seeking payment of a contribution by way of general average to the cost of salvaging the vessel.

However, proceedings were also brought by the owners of the cargo in the courts of the Netherlands seeking a declaration that they were not obliged to contribute to any general average. The cargo owners sought to have the owner of the vessel declared exclusively liable. While it is not stated explicitly in the judgment, it would appear to be the case that it was alleged that they had allowed the vessel to proceed in circumstances where it was not fit to do so. Thus, the parties to both sets of proceedings were different. However, it was argued that Drouot, as insurer, should be treated as the same party as the insured (i.e. the owners of the vessel).

This was disputed by Drouot on the basis that its interest in pursuing the French proceedings was distinct and different and that it could not be treated as the same party as its insured. In its judgment, the Court of Justice acknowledged that there may well be circumstances where the interests of an insurer and insured will be the same for the purposes of the application of Art. 21 of the Brussels Convention but that this did not appear to be so on the facts of the case (although the determination to that effect would ultimately be a matter for the national court).

In paras. 17 and 18 of its judgment, the Court of Justice referred to the approach taken in The Tatry and then added at paras. 19 – 23 as follows:- “19. It is certainly true that, as regards the subject-matter of two disputes, there may be such a degree of identity between the interests of an insurer and those of its insured that a judgment delivered against one of them would have the force of res judicata as against the other. That would be the case, inter alia, where an insurer, by virtue of its right of subrogation, brings or defends an action in the name of its insured without the latter being in a position to influence the proceedings.

In such a situation, insurer and insured must be considered to be one and the same party for the purposes of the application of Art. 21 of the Convention.

20. On the other hand, application of Article 21 cannot have the effect of precluding the insurer and its insured, where their interests diverge, from asserting their respective interests before the courts as against the other parties concerned.

21. In the present case, CMI and Protea made clear at the hearing that, in the Netherlands action, they seek to have Mr Velghe declared exclusively liable for the foundering of the Sequana. As the insurer merely of the hull of the vessel, however, Drouot takes the view that it cannot be held liable for the fault of its insured and thus has no interest in the Netherlands action.

22. It appears, moreover, that, in the French action, Drouot has been acting not in its capacity as the representative of its insured but in its capacity as a direct participant in the refloating of the Sequana.

23. Thus, in this case, it does not appear that the interests of the insurer of the hull of the vessel can be considered to be identical to and indissociable from those of its insured, the owner and the charterer of that vessel. However, it is for the national court to ascertain whether this is in fact the case.”

95. The test as to whether one party’s interests are identical to and indissociably associated with those of another is obviously very fact-dependent. As the passage quoted above confirms, there are occasions when the interests of an insurer and insured will be sufficiently indissociable that they can be treated as the same party but whether the test is met, in any individual case, will require examination of the underlying circumstances.

96. The approach taken in The Tatry and in the Drouot case was subsequently analysed and summarised by Collins L.J. (as he then was) in Kolden Holdings Ltd. v. Rodette Commerce [2008] 3 All ER 612 at p. 633 where he said:- “[85] The starting point is that these general propositions can be derived from The Tatry and the Drouot case. First, the object of art 27 is to prevent parallel proceedings in different member states and to avoid conflicts between decisions and irreconcilable judgments: see The Tatry (para 32), the Drouot case (para 17). Second, the term between ‘the same parties’ has an independent or autonomous meaning: see The Tatry (para 47). Third, in considering whether two entities are the ‘same party’ for the purposes of applying the regulation, the court looks to the substance, and not the form: see The Tatry. Fourth, although the parties must be ‘identical’ (see The Tatry (para 33), the Drouot case (para 18)), this identity is not destroyed by the mere fact of there being separate legal entities involved: in The Tatry in the English proceedings the party was the sister ship, and in the Dutch proceedings was the shipowner; in the Drouot case the barge owner and the hull insurer were held to be capable of being the ‘same parties’. Fifth, whether they are identical for this purpose may depend on whether there is such a degree of identity between the interests of the entities that a judgment given against one of them would have the force of res judicata as against the other: see the Drouot case (para 19). Sixth, it will also depend on whether the interests of the entities are identical and indissociable, and it is for the national court to ascertain whether this is in fact the case: see the Drouot case (para 23). In the context of a subrogated claim the court also emphasised that the insured would not be in a position to influence the proceedings: see the Drouot case (para 19).”

97. While Collins L.J. suggested that identity between parties is not destroyed by “the mere fact” that they are separate legal entities, that observation should be seen in context. He illustrated it by reference to the underlying facts of both the Drout case and The Tatry. When read in context, I believe that he was doing no more than suggesting that, if, on the facts, the parties’ interests are identical and indissociable, the fact that they are separate legal entities does not matter for the purposes of the “same parties” test. Conversely it seems to me that, in the absence of appropriate material to support the contention that two separate legal entities have identical and indissociable interests within the meaning of the Court of Justice test, there would plainly be no basis to treat them as the same parties.

98. Turning to the circumstances of this case, there was no dispute between the parties that what must be shown is that the interests of the parties are identical and indissociable. The parties were agreed that this is the ultimate test but there was disagreement between them in relation to how the test should be applied to the facts of this case. Among the submissions made by counsel for the appellants was that, in the Irish proceedings, there are additional parties who are not party to the German proceedings. In addition, he argued that there were parties to the German proceedings who were not parties to the Irish proceedings. In this context, he highlighted the existence of the second to fifth appellants in these proceedings and he also highlighted the existence of MSD Ireland in these proceedings which is not named as a party in Germany. For the reasons discussed in para. 93 above, I am of the view that counsel for the appellants was mistaken insofar as he relied upon the existence of the second to fifth appellants as parties. No trade mark infringement claim is asserted by them. It follows from the approach taken by the Court of Justice in both The Tatry and Drouot that one looks solely at the parties to the trade mark infringement action. It is only the trade mark infringement action that can come within the ambit of Art. 136(1) of the EU Trade mark Regulations.

99. For the purposes of the trade mark infringement claim, the relevant parties to the Irish proceedings are Merck Germany, on the one hand, and MSD Ireland on the other. The question is whether they are the same parties as the proceedings to the German proceedings namely Merck Germany, on one side, and Merck & Co. Inc and Merck Sharpe & Dohme Corp., on the other. In this context, it seems to me that Merck & Co. Inc and Merck Sharpe & Dohme Corp., as the predecessors in title to MSD, can be regarded as one and the same party as MSD. Thus, for the purposes of this comparison, I believe the relevant players are Merck Germany (which is the party asserting infringement of its trade marks in both the German and Irish proceedings), MSD (which, as successor in title to the defendants named in the German proceedings, can be taken to be the relevant defendant in respect of the trade mark infringement claim for the purposes of the German proceedings) and MSD Ireland (which is the only party against whom trade mark infringement is alleged in these proceedings). Given that the relevant plaintiff (Merck Germany) is identical in both sets of proceedings, the question to be considered here is whether the respondents have established that the interests of MSD and MSD Ireland are identical and indissociable within the meaning of the test. In this context, they are plainly both in the same group of companies but they are, nonetheless, as a matter of law, separate legal entities with their own individual legal personality. There is nothing in either the Drout case or in The Tatry to suggest that members of the same corporate group will automatically be treated as the same parties. Therefore, the question is whether there is sufficient material before the Court to support the view that their interests are identical and indissociable.

100. There is some evidence on the point. This is identified by the High Court judge in para. 95 of his judgment. The evidence begins with the affidavit of Mr. Holston sworn on 1st February 2024 where he said at paras. 27 and 28 as follows: “27. In these proceedings, Merck KGaA has asserted trade mark infringement only against MSD Ireland which is not a defendant in the EUTM German proceedings. However as noted above, MSD LLC and MSD Ireland are members of the same group of companies and they are under the same ownership and control and the two entities are closely economically linked. MSD LLC has local subsidiaries in each country, they operate for business and legal reasons. In some instances they have multiple entities due to animal health and human health operations. It also has holding companies which hold stock in other companies. Indeed, in the … German proceedings, Merck KGaA claimed trade mark infringement in respect of the activities alleged to have been carried out across the EU, including in Ireland, and MSD Ireland is specifically identified in the German proceedings as the Irish subsidiary of MSD LLC. Thus, in circumstances where Merck KGaA opted to assert trade mark infringement in Germany against MSD LLC in respect of conduct carried out in Ireland by MSD Ireland, I say and believe that Merck's selection of MSD Ireland as the sole defendant in respect of trade mark infringement in these proceedings appears to be tactical.

28. I believe there is a unity of interest on the part of MSD Ireland and MSD LLC to avoid irreconcilable judgments concerning the Irish registered trade mark on the one hand and the EU trade mark on the other.”

101. The suggestion that the naming of parties by the appellants had been done on a tactical basis was rejected in a replying affidavit of Mr. Koelle sworn on 5th March 2024 at paras. 6 and 7 as follows:- “6. In … the course of his commentary, Mr. Holston asserts at paragraph 27 of his affidavit that Merck's selection of MSD Ireland as the sole defendant in respect of trade mark infringement in these proceedings appears to be tactical. With respect, this is mere speculation on the part of Mr. Holston who does not identify any factual basis for this charge. The reality is that the claims of trade mark infringement advanced in these proceedings concern three Irish registered trade marks (the ‘IRTMs’) and are directed against MSD Ireland which is an Irish registered company. Accordingly, it is entirely appropriate that these claims are prosecuted before the Irish courts, as is the case of the claim for passing off that is also advanced against MSD Ireland. Mr. Holston makes brief reference to the latter in paragraphs 5, 34 and 44 of his affidavit, but I note that in paragraph 34 he erroneously asserts that the passing off claim is as against ‘the defendants’, and in paragraph 44 he claims that the Agreement (i.e. the 1970 Agreement and the 1975 Letter) offers a complete defence to inter alia the plaintiffs’ claim for passing off against the defendants when in fact the cause of action in respect of which I have been advised is a common law tort (and thus has no equivalent to the EUTM German proceedings) and is maintained against MSD Ireland alone. Thus the courts best suited to hear and determine, in a convenient and cost effective manner, such claims against an Irish registered company in respect of activity conducted in Ireland are the Irish courts who are obviously the best placed to apply the law of this jurisdiction.”

7. The assertions by Mr. Holston (at paragraphs 27 and 28)....that the German proceedings are against the ‘same party’ is wrong and the criteria of Article 136(1) are accordingly not met, a point that will be appropriately addressed further by way of legal submission.’”

102. In my view, Mr. Holston has failed to place any sufficient information before the court as to the relationship between MSD and MSD Ireland to support the view that the interests of both companies are identical and indissociable within the meaning of the case law of the Court of Justice. The approach taken is at an extremely high level. No detail whatever has been provided. All he said was that MSD and MSD Ireland are members of the same group of companies, that they are under the same ownership and control, that the two entities are “closely economically linked”, that MSD has local subsidiaries in each country and that they “operate for business and legal reasons.” That does not provide the court (or the appellants) with any objective evidence to make an independent assessment of the matters asserted. Given that Mr. Holston was swearing the affidavit on behalf of both MSD and MSD Ireland, he must have been in a position to provide some level of detail about the relationship between them and the extent to which their interests are indissociable and identical.

103. There is a striking similarity between the language used by Mr. Holston in his affidavit and the language used by the Advocate General of the Court of Justice in the course of his opinion which preceded the judgment of the Court of Justice in the reference made by the German courts described in para. 12 above. In his opinion in that case, the Advocate General addressed the issue of “same parties” albeit that the issue was not ultimately addressed by the Court of Justice itself. The matter was addressed by the Advocate General in the following way in paras. 39–46 of his opinion as follows:- “ 39. Where parallel proceedings have only some parties in common, the second court seised is required to decline jurisdiction only to the extent to which the parties to both sets of proceedings are the same, and the action before it can thus continue between the other parties.

40. In principle, in order for the parties to be the same, they must be the same persons.

41. Nevertheless, in certain exceptional circumstances, the requirement may be met even if the parties to the parallel proceedings are different persons.

42. The Court has accepted that it is conceivable for the interests of the two parties, in relation to the subject matter of the proceedings, to be regarded as identical and indissociable to such an extent that they must be considered to be one and the same party for the purposes of application of the lis pendens rules.

43. In my opinion such exceptional circumstances exist in the case of two parallel actions for infringement —such as those to which the present case relates — involving the same sign used by companies which are economically linked.

44. Within a group of companies, control of intellectual property rights, including trade mark rights, must be given to one of the legal persons, often the parent company, even though, in practice, the signs may be used in the same way by all group companies.

45. In those circumstances, the interests of the companies concerned, notwithstanding that they are distinct persons, exhibit such unity that those companies can be regarded as being one and the same party for the purposes of the objective of avoiding contradictory judgments in trade mark matters.

46. I therefore consider that, in circumstances such as those of the present case, two parallel actions for infringement, one brought against the parent company and the other against that same company and its subsidiary, must be regarded as proceedings between the same parties where the actions relate to the use of the same sign by economically connected entities. It will, of course, be for the national court to apply those criteria in the main proceedings.”

104. As can be seen from para. 100 above, Mr. Holston also used the same words “economically linked” in his affidavit. In my view, it is insufficient to merely make that assertion in the affidavit without providing some level of detail to enable the court to form its own view of the matter. While it might seem obvious that a subsidiary and its parent might have a unity of interest in relation to an issue of this kind, the court has to act on evidence. The relevant facts must have been known to Mr. Holston and, just as the appellants had an obligation to place evidence before the court in the context of O. 11, the respondents (as the moving parties) had the burden of doing so in the context of their application under Art. 136(1)(1a). In these circumstances, I do not believe that the court can be satisfied that MSD Ireland and MSD should be treated as the same party for the purposes of Art. 136(1)(a). On the basis of the limited materials which the respondents chose to place before the court, there is nothing to displace the natural conclusion derived from their separate legal existence and personality that MSD Ireland is not the same party as the MSD (or, by extension, its predecessors in title named as defendants in the German proceedings).

105. It follows that Art. 136(1)(a) is inapplicable on that basis. It is therefore unnecessary to address the remaining criteria that apply. It is also therefore unnecessary to consider whether it might be necessary (as the appellants had urged) to make a reference to the Court of Justice as to whether the views expressed by the Advocate General as set out above represent a correct interpretation of Art. 136(1)(a). Furthermore, it would plainly be wrong to make a reference to the Court of Justice without being in a position to place the relevant facts before that Court to assist it in considering the issue. In light of the dearth of evidence from the respondents on the nature of the relationship between MSD and MSD Ireland, any reference to the Court of Justice would be pitched at an aridly academic level divorced from any relevant facts.

Article 136(1)(b) of the EU Trade Mark Regulation

106. The text of Art. 136(1)(b) has already been set out in para. 86 above. It is not mandatory in its terms but, instead, gives the second seised court a discretion in cases that come within its ambit. However, as the opening words of Art. 136(1) make clear, the requirement that the parties to the proceedings in both jurisdictions be the same applies to both Art. 136(1)(a) and Art. 136(1)(b). In light of the conclusion, I have reached on that issue in the context of Art. 136(1)(a), it follows that Art. 136(1)(b) cannot be said to apply. In turn, it follows that the decision of the High Court under Art. 136(1)(b) must be set aside.

107. Counsel for the appellants sought to argue that the provisions of Art. 136 represent the only basis on which the Court could address the issue as to the allocation of jurisdiction as between this jurisdiction and Germany. He maintained that there was no scope for the application of the lis alibi pendens regime under the Recast Brussels Regulation. For the reasons explained in para. 31, I believe that this argument is misconceived. I am of the view that Art. 122 of the EU Trade Mark Regulation makes very clear that, unless otherwise specified in the Regulation, the EU rules on jurisdiction apply to proceedings relating to simultaneous and successive actions on the basis of EU trade marks and national trade marks. Article 136 is, of course, a provision that specifically addresses the allocation of jurisdiction. It follows that, for those cases which fall within either Art. 136(1)(a) or Art. 136(1)(b), the Recast Brussels Regulation does not apply. However, there are only limited types of trade mark infringement action that fall within either of those categories. Where an infringement action does not fall into either category, it follows from the terms of Art. 122, that the Recast Brussels Regulation continues to apply. It would be a very surprising lacuna in the EU regime if there was not the ability to address the allocation of jurisdiction as between Member States in cases which do not fall within the relatively narrow ambit of Art. 136. I am satisfied that it is very clear that no such lacuna exists and I therefore next turn to consider the position under Arts. 29 and 30 of the Recast Brussels Regulation.

Article 29 of the Recast Brussels Regulation

108. Article 29 addresses circumstances where proceedings involving the same cause of action arise between the same parties in the courts of different Member States. In such circumstances, any court other than the court first seised is required to stay the proceedings before it until the jurisdiction of the court first seised is established. The full text of the Article is as follows:

“1.Without prejudice to Article 31(2), where proceedings involving the same cause of action and between the same parties are brought in the courts of different Member States, any court other than the court first seised shall of its own motion stay its proceedings until such time as the jurisdiction of the court first seised is established.

2. In cases referred to in paragraph 1, upon request by a court seised of the dispute, any other court seised shall without delay inform the former court of the date when it was seised in accordance with Article 32.

3. Where the jurisdiction of the court first seised is established, any court other than the court first seised shall decline jurisdiction in favour of that court”

109. Given that Art. 29 incorporates a requirement that the proceedings in question must be between the “same parties”, it follows, for all of the reasons discussed in paras. 90 to

105 above, that Art. 29 cannot apply here. The respondents’ cross-appeal in respect of Art.

29 must therefore be dismissed.

Article 30 of the Recast Brussels Regulation

110. Article 30 remains to be considered. As will be seen from its terms, it has a much broader application than Art. 29. It applies where there are “related proceedings” in being in more than one Member State. For this purpose proceedings are “related” where there is a risk of irreconcilable judgments arsing in the event that both proceedings were to be pursued in parallel. There is no requirement that the parties be the same. However, unlike Art. 136(1) of the EU Trade Mark Regulation or Art. 29 of the Recast Brussels Regulation, Art. 30 is not mandatory. Instead, the court which is second seised is given a discretion to stay the proceedings before it.

111. Art. 30 provides as follows:-

“1. Where related actions are pending in the courts of different Member States, any court other than the court first seised may stay its proceedings.

2. Where the action in the court first seised is pending at first instance, any other court may also, on the application of one of the parties, decline jurisdiction if the court first seised has jurisdiction over the actions in question and its law permits the consolidation thereof.

3. For the purposes of this Article., actions are deemed to be related where they are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.”

112. The provisions of Art. 30 have been considered by the Supreme Court in Websense International Technology Ltd. v. ITWAY SpA [2014] 2 I.R. 485. In that case, the plaintiff issued summary proceedings in Ireland seeking to recover monies allegedly owing to it on foot of a distribution agreement with the defendant, an Italian company. However, prior to the initiation of these proceedings, a group of companies to which the defendant belonged had issued proceedings in Italy alleging breaches of the distribution agreement and of the Italian Civil Code by a group of companies to which the plaintiff belonged. The Irish proceedings were commenced by summary summons. The defendant sought, inter alia, a stay on the Irish proceedings pursuant to what was then Art. 28 of the Brussels Regulation (now Art. 30 of the Recast Brussels Regulation). The High Court granted a stay pending a

decision on jurisdiction by the Italian courts, having determined that the Italian and Irish proceedings were “related actions” and that it was for the court first seised to ascertain the effect of an alleged exclusive jurisdiction clause which was said to be applicable. The plaintiff appealed to the Supreme Court, arguing that the Irish and Italian proceedings were not “related actions”, that the High Court Judge erred in his failure to take account of the exclusive jurisdiction clause, and that the court should in any event have exercised its discretion to refuse to grant a stay.

113. The appeal failed. In the course of his judgment, MacMenamin J. provided very helpful guidance as to the approach to be taken. At p. 496, he said: “[33] The fact that the term ‘related action’ has an autonomous meaning derives from the undoubted fact that it will not have the same interpretation in all member states in their national laws. As a consequence, in Owners of Cargo Lately Laden on Board the Tatry v. Owners of the Maciej Rataj (Case C-406/92) [1994] E.C.R. I- 5439, the Court of Justice held, at para. 53, that:- ‘In order to achieve proper administration of justice, that interpretation [of related action] must be broad and cover all cases where there is a risk of conflicting decisions, even if the judgments can be separately enforced and their legal consequences are not mutually exclusive’ … This broad statement of principle is clearly intended to forestall any possibility that national courts might feel constrained to engage in a minute or piece by piece analysis of the similarities and distinctions between two cases in two different member states. No such approach is warranted.” (The emphasis is that of MacMenamin J.)

114. MacMenamin J. very strongly emphasised that, in considering whether there was a risk of conflicting decisions, courts should not engage in a minute analysis of the similarities and distinctions between the parallel proceedings. In that context, he cited, with approval, the decision of the House of Lords in Sarrio S.A. v. Kuwait Investment Authority [1999] 1 A.C. 32 (which addressed Art. 22 of the then applicable Brussels Convention to similar effect as Art. 30). In that case, the Court of Appeal in England and Wales had taken the view that, in considering whether there was a risk of irreconcilable decisions, the court should confine itself to the facts which are necessary to establish a cause of action and should not consider other issues of fact which the court may or may not decide and which are not essential to the cause of action. That approach was rejected by the House of Lords.

115. The rationale for rejecting the narrow approach taken by the Court of Appeal was explained by Lord Saville said at pp. 40-41 as follows: “… it seems to me that the words of the article itself militate against the suggested limitation. The actions, to be related, must be ‘so closely connected that it is expedient to hear and determine them together’ to avoid the risk of irreconcilable judgments resulting from separate proceedings. To my mind these wide words are designed to cover a range of circumstances, from cases where the matters before the courts are virtually identical (though not falling within the provisions of article21) to cases where although this is not the position, the connection is close enough to make it expedient for them to be heard and determined together to avoid the risk in question. These words are required if ‘irreconcilable judgments’ extends beyond ‘primary’ or ‘essential’ issues, so as to exclude actions which, though theoretically capable of giving rise to conflict, are not sufficiently closely connected to make it expedient for them to be heard and determined together. The words would hardly be necessary at all if the article was to be confined as suggested. … I take the view that to attempt to analyse actions so as to distinguish between different kinds of issues would be likely to add to the complexity of applications under article

22 and thus to the expense and delay in dealing with them. Instead of simply considering whether the actions were so closely connected that it was expedient that they should be heard and determined together to avoid the risk of conflicting decisions, the parties and the court would have to embark upon a sophisticated and difficult exercise of legal analysis, made more complicated by the fact that the court would be dealing not with actual judgments, but with what judgments yet to be given would be likely to contain. It must be borne in mind that article 22 is concerned not with the substantive rights and obligations of the parties, but with the ancillary and procedural question as to where in the Community those rights and obligations should be heard and determined. There is nothing in the Convention that suggests that it is in the interests of the Community that litigation on this question should be made more expensive and time consuming than is necessary. … For these reasons, I am of the view that there should be a broad commonsense approach to the question whether the actions in question are related, bearing in mind the objective of the article, applying the simple wide test set out in article 22 and refraining from an over-sophisticated analysis of the matter.” (The emphasis, again, is that of MacMenamin J.)

116. It is clear from the judgment of MacMenamin J. that he (and the Supreme Court as a whole) endorsed the approach advocated by Lord Saville in the Sarrio case. The decision in Websense is binding on this Court. Accordingly, in deciding this element of the cross-appeal, it is necessary to take a broad commonsense approach to the question whether the German and Irish proceedings are related within the meaning of Art. 30.

117. In Websense, the Supreme Court came to the conclusion, on the facts, that there was “a high degree of relatedness” between the Irish and the prior Italian proceedings and rejected the plaintiff’s appeal but it is clear from p. 504 of the report that the Court did not consider that it was necessary to show such a high degree of relatedness to justify the grant of a stay. There are a number of further aspects of the judgment of MacMenamin J. which are relevant for present purposes. At pp. 502- 503, he highlighted that delays in the legal system of the jurisdiction of the court first seised will not ordinarily defeat an application for stay. In this context, he cited the decision of the Court of Justice in Case C-116/02 Erich Gasser GmbH v. MISAT Srl. (ECLI:EU:C:2003:657) where the Court said at para. 68: “68. It is not compatible with the philosophy and the objectives of the Brussels Convention for national courts to be under an obligation to respect rules on lis pendens only if they consider that the court first seised will give judgment within a reasonable period. Nowhere does the Convention provide that courts may use the pretext of delays in procedure in other Contracting States to excuse themselves from applying its provisions.”

118. It is important to record that the Erich Gasser decision was concerned with the application of the provisions of Art. 21 of the Brussels Convention (which is now to be found in Art. 29 of the Recast Brussels Regulation). Nonetheless, MacMenamin J. expressed the view that the observations of the Court of Justice were relevant to what is now Art. 30 of the Recast Brussels Regulation. At pp. 503-504, he explained the position as follows: “[47] To my mind, Erich Gasser GmbH v. MISAT Srl … remains strong authority on the manner in which the Court of Justice would approach this question, not just in relation to article 27 but also, even though there may be a discretion, in relation to article 28. [48] I say this having regard to the views of Advocate General Lenz in Owens Bank Ltd. v.

Bracco (C-129/92) [1994] E.C.R. I-117, where he observed, at para. 75:- ‘75. The decision required in the context of Article 22 of the Convention is a discretionary decision. It goes without saying that the circumstances of each individual case are particularly important here. The national courts must bear in mind that the aim of this provision is ‘to prevent parallel proceedings before the courts of different Contracting States and to avoid conflicts between decisions which might arise therefrom’, as the Court stated in its judgment in Overseas Union Insurance.

It would therefore be appropriate in case of doubt for a national court to decide to stay its proceedings under Article 22’ In short, the second seised court is to err on the side of caution. The Advocate General’s opinion contains a footnote referring to a decision of the English High Court in Virgin Aviation Services Limited v. CAD Aviation Services [1991] I.L.Pr. 79, in which that court held that there was a strong ‘presumption’ in favour of allowing an application for a stay. [49] That said, however, the Advocate General went on to identify three factors which may ‘be relevant’ to the exercise of the discretion vested in national courts.

These were, first, the extent of the relatedness and the risk of mutually irreconcilable decisions; second, the stage reached in each set of proceedings, and, third, the proximity of the courts to the subject matter of the case. [50] But, nonetheless, as a general rule, I think a stay should be granted by the second court. For a case to be clear, the facts would have to very clearly indeed point to a refusal of a stay….” (The emphasis is that of MacMenamin J.)

119. Those observations of MacMenamin J. strongly reinforce the pragmatic approach taken by the House of Lords in the Sarrio case and they also endorse (albeit subject to the admonition that, as a general rule, a stay should be granted) the use of the three factors identified by Advocate General Lenz in the Owens Bank case as an aid to the court in deciding how the discretion should be exercised namely:

(a) The extent of the relatedness and the risk of mutually irreconcilable decisions;

(b) The stage reached in each set of proceeding; and

(c) The proximity of the courts to the subject matter of the case.

120. That said, it is important to keep in mind that these are no more than useful aids to assist the court. They are not intended to be exhaustive or definitive. The second court must also keep in mind the language of the Article, the policy underlying it, and the advice of the Advocate General (endorsed by MacMenamin J.) that, if the second court is in doubt, it should resolve that doubt in favour of staying the proceedings.

121. Turning to the circumstances of this case, the appellants have expressly conceded in para. 177 of their written submissions that “there is some connection between the proceedings in Ireland and the proceedings in Germany” but they contend that the German Court will not rule on Irish national websites being infringements of national Irish trademarks of Merck; that the trademarks in issue in the respective proceedings are not identical; that any final decision in the German Courts will not be enforceable against MSD’s Irish subsidiaries “directly”; that the German proceedings (which are concerned with online use) will not rule in respect of the offline uses of the trademarks in Ireland; and they maintain that the Hamburg Landgericht has not ruled on any breaches of the co-existence agreement.

122. The appellants also contend that, if these proceedings are stayed, Merck Germany will be prevented from pursuing a claim for infringement of its Irish trade marks and for passing off in the only court which has jurisdiction to hear and determine those claims. An argument is made on this basis that there is a very high degree of proximity between the claims made in these proceedings and this jurisdiction and that the High Court judge was in error in suggesting (in para. 47 of his judgment) that the proceedings have no proximity to any location on the basis that they are “largely internet based”.

123. In addition, in the course of the hearing of the appeal, counsel for the appellants submitted that there has been extensive delay in the German proceedings and suggested that, in contrast, these proceedings could be brought to trial within a period of 12 months.

124. The case made by the respondents is that the crux both of the German proceedings and these proceedings is concerned with the interaction between Merck Germany’s claims of trade mark infringement (and also the breach of contract and passing off claims in these proceedings), on the one hand, and the scope of the entitlement of MSD’s contractual entitlement under the co-existence agreement to use the Merck sign, on the other. They draw attention in this context to a number of aspects of the claims made in the German proceedings, including a statement made in Merck Germany’s statement of grounds of appeal against the decision of the Landgericht. For present purposes, it is sufficient to illustrate this point by reference to the statement of grounds where (translated into English) Merck Germany makes the following case from which the relevance of the co-existence agreement is immediately apparent: “… [T]he parties have thus already entered into contractual arrangements with regard to the registration and use of trademarks with the component ‘Merck’. According to these arrangements, the Plaintiff alone is entitled to register and use trademarks with the component ‘Merck’. … However, the [Respondents] are not willing to honour the agreements once made and continue to use the sign ‘Merck’ in isolation and as a distinctive component of combination marks on the Internet ever more extensively, thereby infringing the Plaintiff’s European Union trade mark …. For this reason, the Plaintiff has filed a complaint... in which it is essentially requesting a restriction of the [Respondents’] use of the sign “Merck” on the Internet in the EU …” (emphasis added)

125. In addition, the respondents draw attention to para. 15 of the statement of claim in these proceedings where it is expressly pleaded that the co-existence agreement “govern[s] the parties’ modern day use of ‘Merck’”.

126. As I have previously noted in para. 14 above, it appears from a reading of its judgment that the Landgericht’s rejection of the appellants’ claims of trade mark infringement was substantially influenced by the view the Court took of the defendants’ entitlements under the co-existence agreement. While the appellants have resolutely maintained that breaches of the co-existence agreement are not the subject of the German proceedings, it appears to be the case that the co-existence agreement loomed in a significant way in the proceedings and that it was central to the successful defence of the MSD defendants. Equally, the extent of MSD’s claimed rights under the co-existence agreement will be central to the respondents’ defence to Merck Germany’s claims in these proceedings. As outlined in para. 58 above, the co-existence agreement, by its terms, covers both MSD and its subsidiaries; para. 1(a) specifically defines “Merck & Co” as meaning not only “Merck & Co Inc” (the predecessor in title to MSD) but also its subsidiaries and affiliates. Thus, the co-existence agreement appears to be as relevant to MSD Ireland’s defence of Merck Germany’s claims as it would be to MSD itself (if the latter had been properly joined to these proceedings).

127. In my view, that defence is relevant to each of the claims asserted by Merck Germany. It is obviously so in respect of the breach of contract claim (if MSD had been properly joined as a defendant). In so far as trade mark infringement is concerned, it is, as noted by the respondents in their written submissions, an essential element of any such claim that the defendant’s use of the mark was made “without the proprietor’s consent” (to use the language of s. 13 of the Trade Marks Act 1996). That is also the essence of infringement under EU law. The appellants have sought to argue that the tort of passing off is somehow different but, in my view, the respondents are correct in the submission made by them that, for passing off, the necessary element of misrepresentation cannot be present if the plaintiff has consented to the activity complained of.

128. Applying the approach mandated by the Supreme Court decision in Websense, it seems to me to be very clear that there is an obvious risk of inconsistent decisions if both the Irish and German proceedings are to continue on parallel paths. As that decision emphasises, it is not appropriate to engage in a minute analysis of the similarities and distinctions between the two cases. A broad commonsense view must be taken. There are, of course, differences between the claims made in both sets of proceedings but they have one central and highly significant issue in common – namely the extent of the rights of MSD and its subsidiaries under the co-existence agreement to use the Merck sign. For this purpose, I do not believe that it matters that the Irish trade marks are figurative and that the EU trade mark is a word mark. In both cases, the allegation is made that the use of the Merck name by the respondents constitutes an infringement. Notwithstanding an attempt by counsel for the appellants to suggest the contrary, that is also the central allegation made in respect of the passing off claim. Paragraph 34 of the statement of claim pleads in straightforward terms that: “By its use of the name and sign ‘Merck’ in the State, MSD Ireland has passed off its goods and/or its services as the goods and/or the services of the Plaintiffs … and/or passed itself off as a business forming part of the Merck group ….”. (Emphasis added).

129. Likewise, it does not seem to me to be material that the complaint made in the German proceedings related to online use while the complaint made in these proceedings relates to both online and offline use (the latter relating to use at “conferences and events in Ireland”). In both cases, the complaint is that MSD Ireland is using Merck as a sign in the course of trade. The central question would therefore appear to be very similar – i.e. whether MSD Ireland is entitled to use the Merck name in Ireland. It is clear that, in either case, the claimed rights under the co-existence agreement will be a central element of the defence.

130. A vivid illustration of the risk of irreconcilable judgments is to be found in the different conclusions as to the effect of the co-existence agreement reached by the Landgericht, on the one hand, and the courts of England and Wales, on the other. In the course of the hearing of the appeal, counsel for the appellants suggested that the decisions reached in the English proceedings in accordance with German law principles of contractual interpretation were to be preferred. It would be premature and entirely inappropriate to express any view on that issue. What is important for present purposes is that differing views were taken by two national courts of the extent of the rights available to MSD companies under the co-existence agreement. In my view, that demonstrates, in stark terms, the very real risk of irreconcilable judgments in the event that a stay is not granted.

131. In the circumstances, I do not believe that it is necessary to consider the decision of the Court of Appeal of England and Wales in Easygroup Ltd. v. Easy Rent a Car Ltd. [2019]

1 WLR 4630 cited by the respondents.

132. Of course, the determination that there is a risk of irreconcilable judgments is not the end of the exercise under Art. 30. Unlike Art. 29, Art. 30 does not impose a mandatory obligation on the Court to grant a stay. It is therefore necessary to consider whether the Court should exercise its discretion in favour or against the grant of a stay. While the factors identified by Advocate General Lenz in the Erich Gasser case are not to intended to be anything more than a potential guide, it is clear from Websense that a court is entitled to have regard to them as part of this exercise.

133. In so far as the extent of relatedness is concerned, I take the view, for all of the reasons outlined in paras. 124 to 130 above, that there is a high degree of relatedness between both sets of proceedings and a high risk of irreconcilable judgments. This is a factor that, in my view, weighs heavily in favour of the grant of a stay.

134. Another factor that weighs strongly in favour of the grant of the stay is the fact that the hearing of the appeal in the Hanseatic Regional Court is to take place later this year. This suggests that a definitive decision should be available relatively soon as to whether the view taken by the Landgericht was correct (i.e. the view taken by it of the rights of MSD companies under the co-existence agreement). While it has taken a long time for the appeal to get a hearing date, there is no evidence in the affidavits before the Court to suggest that this period of delay has been caused by the German court system. Moreover, even if there had been such evidence, it is clear from the judgment of MacMenamin J. in Websense that this would not weigh particularly heavily against the grant of a stay.

135. On the other side of the equation, the proceedings in this jurisdiction have not gone further than the delivery of a statement of claim and an exchange between the parties in respect of further particulars of the allegations made in it. As noted above, counsel for the appellants sought to suggest that these proceedings would be ready for hearing within a year. In my view, that is an entirely unrealistic suggestion. From my recent experience as a judge assigned to the Commercial List, I believe that it is likely that the discovery process in these proceedings will be both hard fought and protracted. It is evident from the submissions made by counsel for the appellants that a significant discovery exercise will be required in this case. Counsel made it clear that the appellants are concerned that they do not yet know the true extent of the use of the Merck name by the respondents in the State and that discovery will be an important weapon in their armoury in seeking to establish the extent of that use. Notwithstanding the process of engagement mandated by O. 31, r. 12 and the clarity of the principles governing discovery as set out in the judgment of Clarke C.J. in Tobin v. Min. for Defence [2020] 1 I.R. 211, it is a fact of life in the Commercial List that well-resourced pharmaceutical companies, at war with each other, are rarely able to reach agreement on the terms and scope of discovery to be made. In addition to all of the usual disputes about scope, proportionality, duration and privilege, there are also, frequently, issues about confidentiality and commercial secrecy. It will therefore be necessary for the process under O. 31, r. 12 to be undergone, followed by the bringing of applications on both sides, the exchange of affidavit evidence, followed by the exchange of written submissions, an oral hearing and, possibly, a reserved judgment, before any clarity will be arrived at as to the ambit of the discovery to be made. There is also the possibility of an appeal to this Court but I will leave that out of the equation. The making of discovery is likely to require an extensive period of time on both sides. Taking all of these considerations into account, it could well be July 2026 (or later) before the discovery process would be completed. It is only at that stage that witness statements could be finalised and exchanged to be followed by expert reports and written submissions such that it could be well into 2027 before the case could be heard.

136. When one compares the imminence of the appeal hearing in the German proceedings with the relative infancy of these proceedings, I believe that the second of Advocate General Lenz’s factors weighs strongly in favour of the grant of a stay.

137. It is true that proximity, the third factor identified by Advocate General Lenz ,weighs to some extent against the grant of a stay. The trade mark infringement and passing off claims are plainly matters for the Irish courts and counsel for the appellants has, understandably, stressed that the effect of the stay will be to postpone the onward prosecution of those claims. He has also raised the issue of fragmentation in this context. While I have some sympathy for this argument, I do not believe that it outweighs the other considerations which I have identified which seem to me to strongly tilt the scales in favour of a stay. I have formed that view for a number of reasons. First, the relief in issue is no more than a stay to avoid the prospect of inconsistent decisions being reached by the German and Irish courts. The stay does not, of itself, mean that these claims can never be pursued. Second, it has to be said that, while the protection of trade marks and business goodwill has always been recognised as an important function of the courts, the claims made here are not of the same order as those typically seen where the activities of a defendant are said to be causing such damage to a plaintiff’s business as to warrant the grant of an interlocutory injunction. The particulars both of trade mark infringement and passing off which have been furnished to date by the appellants are quite limited. In so far as trade mark infringement is concerned, the particulars in para. 30 of the statement of claim are put forward in very general terms. The further particulars that have been furnished subsequently suggest that many of the allegations are historic and are no longer continuing. Complaint is made about the supply in October 2023 of copies of the Merck Veterinary Manual to UCD Veterinary School and about a LinkedIn post in January 2023. Five instances of past use are then given but, notably, it is expressly accepted in the particulars that these uses appear to have ceased. In so far as passing off is concerned only three instances of confusion are identified, one in 2017, one in 2020 and one in 2023. As counsel for the plaintiffs stressed, discovery may throw up more instances but, on the basis of the case currently made, there is no suggestion that the activities of MSD Ireland are impinging in a significant way on the day to day business of the appellants in Ireland.

138. Third, given the advanced stage of the German proceedings, the duration of the stay may be limited and, should the appellants ultimately succeed in their trade mark infringement and passing off claims, there is a variety of relief potentially available to compensate them for any damage or losses they suffer during the currency of the stay including damages and an account of profits.

139. In so far as fragmentation is concerned, it is clear from the approach taken by the Court of Justice in The Tatry (in the passage quoted in para. 91 above), that a stay under Art. 30 should be seen as preventing fragmentation of actions rather than the converse. While that case was concerned with the then equivalent to Art. 29, the Court suggested that Art. 30 mitigates fragmentation where, for example, only part of a claim before the second court seised falls within Art. 29, leaving the balance of the claim to be litigated before that court. The Court of Justice suggested that Art. 30 might be invoked in those circumstances to mitigate the disadvantage of fragmentation. What the Court seems to have had in mind was a concern that, absent such a stay, proceedings would be ongoing in parallel in two jurisdictions and that a stay might be appropriate in those circumstances to avoid that eventuality. Thus, a stay in this context should be seen not as a cause of fragmentation but as a means to avoid it.

140. For all of these reasons, I am of the view that the High Court judge should have granted a stay of these proceedings under Art. 30 of the Recast Brussels Regulation. The respondents are therefore entitled to succeed on this element of their cross-appeal.

Conclusion

141. I would dismiss the appellants’ appeal against so much of the High Court order as (a) set aside the order giving leave for the issue and service of the proceedings out of the jurisdiction on the first defendant and (b) struck out the proceedings against the first defendant; dismiss the respondents’ cross-appeal against the refusal of its motion for an order pursuant to Art. 136(1)(a) of the EU Trade Mark Regulation declining jurisdiction in respect of the claim of trade mark infringement against the second defendant; allow the appellants’ appeal against the order made by the High Court pursuant to Art. 136(1)(b) of the EU Trade Mark Regulation staying the claim of trade mark infringement against the second defendant and the similar order made under the inherent jurisdiction of the High Court in respect of the balance of the proceedings; dismiss the respondents’ cross-appeal against the refusal of its motion for an order pursuant to Art. 29 of the Recast Brussels Regulation; but allow the cross-appeal of the respondents against the failure of the High Court to stay the proceedings against the second defendant pursuant to Article 30 of the Recast Brussels Regulation.

142. I would accordingly affirm so much of the order of the High Court as (a) set aside the order giving liberty to the plaintiffs to serve notice of the proceedings on the first defendant out of the jurisdiction and (b) struck out the proceedings against the first defendant. In lieu of the order of the High Court staying the proceedings against the second defendant under Art. 136(1)(b) of the EU Trade Mark Regulation and its inherent jurisdiction, I would instead order that the claim of trade mark infringement and passing off against the second defendant be stayed pursuant to Article 30 of the Recast Brussels Regulation.

143. In circumstances where the appeal of the appellants has failed to reverse the impact of the orders made by the High Court, it seems to me that the respondents are presumptively entitled to their costs of the appeal, to be adjudicated in default of agreement. If the appellants wish to contend for a different order as to costs, they will need to deliver a short submission of not more than 2,000 words on the issue of costs within 14 days from the date of electronic delivery of this judgment, in which event the respondents will have a similar period to respond in a replying submission of similar length, following which the Court will determine the issue.

144. Allen and O’Moore JJ. have authorised me to say that they agree with this judgment and with the orders that I propose.