Merck Sharp & Dohme Corp v Merck KGaA: Transnational Issue Estoppel & Foreign Judgments

The Singapore Court of Appeal heard an appeal by Merck Sharp & Dohme Corp against Merck KGaA regarding the applicability of issue estoppel arising from a prior English court decision interpreting a co-existence agreement on the use of the name "Merck". The Court of Appeal dismissed the appeal, finding that Merck Sharp & Dohme Corp was estopped from disputing the English court's interpretation of clause 7 of the 1970 agreement. The court clarified the principles governing transnational issue estoppel and its application to foreign judgments.

1. Case Overview

1.1 Court

Court of Appeal of the Republic of Singapore

1.2 Outcome

Appeal Dismissed

1.3 Case Type

Civil

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Singapore Court of Appeal addresses transnational issue estoppel, holding Merck Sharp & Dohme bound by a prior English court's interpretation of a co-existence agreement.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Merck Sharp & Dohme Corp (formerly known as Merck & Co, Inc)AppellantCorporationAppeal DismissedLost
Merck KGaA (formerly known as E Merck)RespondentCorporationAppeal DismissedWon

3. Judges

Judge NameTitleDelivered Judgment
Sundaresh MenonChief JusticeYes
Andrew Phang Boon LeongJustice of the Court of AppealNo
Judith PrakashJustice of the Court of AppealNo
Steven ChongJustice of the Court of AppealNo
Quentin LohJudge of the Appellate DivisionNo

4. Counsels

Counsel NameOrganization
Ho Pei Shien MelanieWongPartnership LLP
Lin Si HuiWongPartnership LLP
Lim Xian Yong, AlvinWongPartnership LLP
Lam Chung NianWongPartnership LLP
Chang Man Phing JeremyWongPartnership LLP
Teo Tze SheBird & Bird ATMD LLP
Mok Ho FaiBird & Bird ATMD LLP
Kang Choon Hwee AlbanBird & Bird ATMD LLP

4. Facts

  1. The Appellant and the Respondent both trace their roots to a German family business that commenced in 1668 under the name “E Merck”.
  2. In the 1970s, the predecessors of the Appellant and the Respondent entered into a co-existence agreement to govern the use of the name “Merck” in various jurisdictions around the world.
  3. The co-existence agreement was contained in two documents, respectively termed the “1970 Agreement” and the “1975 Letter”.
  4. The Appellant and the Respondent are embroiled in litigation in a number of jurisdictions around the world over the use of the name “Merck”.
  5. The Respondent and Merck Pte Ltd commenced Suit 415 against the Appellant and three other defendants for trade mark infringement, passing off and breach of contract.
  6. The Appellant appealed against only the Judge’s decision on the Interpretation Preliminary Determination to the effect that it was bound by the ECA’s interpretation of cl 7 of the 1970 Agreement.

5. Formal Citations

  1. Merck Sharp & Dohme Corp (formerly known as Merck & Co, Inc)vMerck KGaA (formerly known as E Merck), Civil Appeal No 223 of 2019, [2021] SGCA 14

6. Timeline

DateEvent
German family business commenced under the name “E Merck”
Predecessors of the Appellant and the Respondent entered into a co-existence agreement
Co-existence agreement supplemented by the 1975 Letter
High Court of England and Wales made a preliminary determination that the governing law of the 1970 Agreement and the 1975 Letter was German law
High Court of England and Wales interpreted various clauses of the 1970 Agreement
English Court of Appeal affirmed the High Court of England and Wales Decision
Merck KGaA and Merck Pte Ltd commenced Suit 415 against the Appellant and three other defendants for trade mark infringement, passing off and breach of contract
Australian Federal Court declined to decide separately before the trial whether the ECA Decision gave rise to issue estoppel in respect of cl 7 of the 1970 Agreement
High Court issued his decision dismissing the summary judgment application but allowing the O 14 r 12 application
Judge provided some oral clarifications
Court of Appeal heard the case
Court of Appeal issued grounds of decision

7. Legal Issues

  1. Issue Estoppel
    • Outcome: The Court of Appeal held that issue estoppel applied to the ECA’s interpretation of cl 7 of the 1970 Agreement.
    • Category: Substantive
    • Sub-Issues:
      • Transnational Issue Estoppel
      • Domestic Issue Estoppel
      • Abuse of Process
  2. Interpretation of Contract
    • Outcome: The Court of Appeal agreed with the Judge’s decision on the Interpretation Preliminary Determination.
    • Category: Substantive
  3. Abuse of Process
    • Outcome: The Court of Appeal found that the Appellant’s conduct of this appeal did not constitute an abuse of process or offend the doctrine of approbation and reprobation.
    • Category: Procedural

8. Remedies Sought

  1. Summary Judgment
  2. Preliminary Determinations

9. Cause of Actions

  • Breach of Contract
  • Trade Mark Infringement
  • Passing Off

10. Practice Areas

  • Commercial Litigation
  • International Litigation
  • Intellectual Property Litigation

11. Industries

  • Pharmaceuticals

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
The Royal Bank of Scotland NV (formerly known as ABN Amro Bank NV) and others v TT International Ltd (nTan Corporate Advisory Pte Ltd and others, other parties) and another appealSingapore Court of AppealYes[2015] 5 SLR 1104SingaporeCited for principles governing domestic issue estoppel.
Merck KGaA v Merck Sharp & Dohme Corp & OthersHigh Court of England and WalesYes[2014] EWHC 3867 (Ch)England and WalesCited as the English Preliminary Decision on the governing law of the 1970 Agreement and the 1975 Letter.
Merck KGaA v Merck Sharp & Dohme Corp, Merck & Co Inc, Merck Sharp & Dohme Limited, Intervet UK Limited, Intervet International BVHigh Court of England and WalesYes[2016] EWHC 49 (Pat)England and WalesCited as the HCEW Decision interpreting various clauses of the 1970 Agreement.
Merck KGaA v Merck Sharp & Dohme Corp, Merck & Co, Inc, Merck Sharp & Dohme Ltd, Intervet UK Ltd, Invervet International BVEnglish Court of AppealYes[2017] EWCA Civ 1834England and WalesCited as the ECA Decision affirming the HCEW Decision.
Merck KGaA v Merck Sharp Dohme CorpAustralian Federal CourtYes[2019] FCA 1084AustraliaCited as the FCA Decision in which the court declined to decide separately before the trial whether the ECA Decision gave rise to issue estoppel in respect of cl 7 of the 1970 Agreement.
BWG v BWFSingapore Court of AppealYes[2020] 1 SLR 1296SingaporeCited for the principle that a party’s adoption of inconsistent positions in the same or related proceedings may potentially amount to an abuse of process, or offend the doctrine of approbation and reprobation.
Treasure Valley Group Ltd v Saputra Teddy and another (Ultramarine Holdings Ltd, intervener)Singapore High CourtYes[2006] 1 SLR(R) 358SingaporeCited for the doctrine of approbation and reprobation.
The “Vasiliy Golovnin”Singapore High CourtYes[2008] 4 SLR(R) 994SingaporeCited for the applicability of issue estoppel to foreign judgments.
The “Bunga Melati 5”Singapore High CourtYes[2012] 4 SLR 546SingaporeCited for the applicability of issue estoppel to foreign judgments.
Carl Zeiss Stiftung v Rayner & Keeler Ltd and OthersHouse of LordsYes[1967] 1 AC 853United KingdomCited for the historical perspective on the recognition of foreign judgments and the caution required when applying issue estoppel to them.
Edward Houlditch, John Houlditch, James Houlditch, and Francis Stubbs v The Most Honourable George Augustus Marquess of DonegallHouse of LordsYes(1834) 6 ER 1232United KingdomCited for the historical perspective on the recognition of foreign judgments.
Samson Ricardo and John Lewis Ricardo v Lorenzo GarciasHouse of LordsYes(1845) 12 Cl & Fin 368United KingdomCited for the shift in English courts towards recognizing foreign judgments as conclusive.
Schibsby v Westenholz and OthersCourt of Queen's BenchYes(1870) LR 6 QB 155United KingdomCited for the doctrine of obligation in enforcing foreign judgments.
Godard and Another v Gray and AnotherCourt of Queen's BenchYes(1870) LR 6 QB 139United KingdomCited for the notion of comity between states in recognizing foreign judgments.
Cottington’s CaseUnknownYesCottington’s Case (1678) 2 Swan 326nUnknownCited for the historical encouragement of recognizing foreign judgments, particularly in family law.
Agbaje v AgbajeUK Supreme CourtYes[2010] 1 AC 628United KingdomCited for the invocation of comity as an important basis for the recognition of foreign judgments at common law.
Beals v SaldanhaSupreme Court of CanadaYes[2003] 3 SCR 416CanadaCited for relying on international comity as a rationale for modernizing private international law.
Goh Nellie v Goh Lian Teck and othersSingapore Court of AppealYes[2007] 1 SLR(R) 453SingaporeCited for the general rule that there should be no distinction between local and foreign judgments as far as the legal principles on the need for identity of issues and parties are concerned.
Helmville Ltd v Astilleros Espanoles SA (The “Jocelyne”)UnknownYes[1984] 2 Lloyd’s Rep 569UnknownCited for the application of the principle that the decision on the specific issue must also be final and conclusive under the law of the jurisdiction from which the foreign judgment emanates.
Joint Stock Company “Aeroflot-Russian Airlines” v Berezovsky & AnrEnglish Court of AppealYes[2014] EWCA Civ 20England and WalesCited for the application of the principle that the decision on the specific issue must also be final and conclusive under the law of the jurisdiction from which the foreign judgment emanates.
Abdel Hadi Abdallah Al Qahtani & Sons Beverage Industry Company v Antliff (Andrew)High Court of England and WalesYes[2010] EWHC 1735 (Comm)England and WalesCited for the application of the principle that the decision on the specific issue must also be final and conclusive under the law of the jurisdiction from which the foreign judgment emanates.
Mad Atelier International BV v ManesHigh Court of England and WalesYes[2020] EWHC 1014 (Comm)England and WalesCited for the illustration that in order for a foreign judgment to give rise to issue estoppel, not only the foreign judgment as a whole, but also the decision on the specific issue that is said to be the subject matter of the estoppel must be final and conclusive under the law of the foreign judgment’s originating jurisdiction.
Zheng Zhenxin v Chan Chun KeungHong Kong Court of First InstanceYes[2018] HKCFI 2284Hong KongCited for the application of the principle that the decision on the specific issue must also be final and conclusive under the law of the jurisdiction from which the foreign judgment emanates.
Henderson v HendersonUnknownYes(1843) 67 ER 313UnknownCited for the doctrine of abuse of process, which entails that any arguments pertaining to the relevance of additional clauses that, in the Appellant’s view, would detract from the interpretation of cl 7 arrived at by the HCEW (in the HCEW Decision) and affirmed by the ECA (in the ECA Decision) could and should have been raised by the Appellant in the English proceedings.
Lim Geok Lin Andy v Yap Jin Meng Bryan and another appealSingapore Court of AppealYes[2017] 2 SLR 760SingaporeCited for the doctrine of abuse of process.
Fidelitas Shipping Co Ltd v V/O ExportchlebCourt of AppealYes[1966] 1 QB 630England and WalesCited for the principle that once an issue has been raised and distinctly determined between the parties, then, as a general rule, neither party can be allowed to fight that issue all over again.
Arnold and Others v National Westminster Bank plcHouse of LordsYes[1991] 2 AC 93United KingdomCited for the Arnold exception to issue estoppel.
Lee Tat Development Pte Ltd v Management Corporation Strata Title Plan No 301Singapore High CourtYes[2009] 1 SLR(R) 875SingaporeCited for the wide perspective of the Arnold exception.
Management Corporation Strata Title Plan No 301 v Lee Tat Development Pte LtdSingapore Court of AppealYes[2011] 1 SLR 998SingaporeCited for the wide perspective of the Arnold exception.
Air Foyle Ltd and another v Center Capital LtdUnknownYes[2003] 2 Lloyd’s Rep 753UnknownCited for the doctrine of perversity, under which a foreign judgment will not give rise to an issue estoppel if it is regarded by the English courts as perverse in the sense that it is at variance with generally accepted doctrines of private international law.
Simpson v FogoUnknownYes(1863) 1 H & M 195UnknownCited for the doctrine of perversity, under which a foreign judgment will not give rise to an issue estoppel if it is regarded by the English courts as perverse in the sense that it is at variance with generally accepted doctrines of private international law.
Telesto Investments Ltd v UBS AGUnknownYes(2013) 94 ACSR 29UnknownCited for the approach that calls for caution in applying the doctrine of issue estoppel to foreign judgments.
Armacel Pty Ltd v Smurfit Stone Container CorporationUnknownYes(2008) 248 ALR 573UnknownCited for the approach that calls for caution in applying the doctrine of issue estoppel to foreign judgments.
Simon Beckwith, “Res judicata and foreign judgments: the Indian Grace”UnknownYes[1994] 43 ICLQ 185UnknownCited for the statement that attempts to rely on foreign judgments as giving rise to issue estoppel will be approached with caution.
Dynasty Line Ltd (in liquidation) v Sia Sukamto and anotherSingapore High CourtYes[2013] 4 SLR 253SingaporeCited for the broad discretionary exception to issue estoppel for foreign judgments, whereby the application of issue estoppel is subject to the overriding consideration of working justice and not injustice.
BAZ v BBA and others and other mattersSingapore High CourtYes[2020] 5 SLR 266SingaporeCited for the broad discretionary exception to issue estoppel for foreign judgments, whereby the application of issue estoppel is subject to the overriding consideration of working justice and not injustice.
Good Challenger Navegante SA v Metalexportimport SA (The “Good Challenger”)UnknownYes[2004] 1 Lloyd’s Rep 67UnknownCited for the broad discretionary exception to issue estoppel for foreign judgments, whereby the application of issue estoppel is subject to the overriding consideration of working justice and not injustice.
Oil & Natural Gas Corporation Ltd v Saw Pipes LtdSupreme Court of IndiaYes(2003) 5 SCC 705IndiaCited to demonstrate the difficulty of ascertaining the extent to which errors may feature under the head of public policy.
Shri Lal Mahal Ltd v Progetto Grano SpaSupreme Court of IndiaYes(2014) 2 SCC 433IndiaCited to demonstrate the difficulty of ascertaining the extent to which errors may feature under the head of public policy.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Choice of Court Agreements Act (Cap 39A, 2017 Rev Ed)Singapore
Reciprocal Enforcement of Commonwealth Judgments Act (Cap 264, 1985 Rev Ed)Singapore
Reciprocal Enforcement of Foreign Judgments Act (Cap 265, 2001 Rev Ed)Singapore
Rules of Court (Cap 322, R 5, 2014 Rev Ed)Singapore
Maintenance Orders (Reciprocal Enforcement) Act (Cap 169, 1985 Rev Ed)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Issue Estoppel
  • Transnational Issue Estoppel
  • Co-existence Agreement
  • 1970 Agreement
  • 1975 Letter
  • Abuse of Process
  • Governing Law
  • Interpretation of Clause 7
  • Identity of Issues
  • Identity of Parties
  • Final and Conclusive Decision
  • Comity
  • Arnold Exception

15.2 Keywords

  • Issue Estoppel
  • Foreign Judgments
  • Singapore
  • Merck
  • Contract Interpretation

17. Areas of Law

Area NameRelevance Score
Abuse of Process85
Transnational issue estoppel75
Res Judicata70
Conflict of Laws60
Contract Law50

16. Subjects

  • Conflict of Laws
  • Civil Procedure
  • Contract Law
  • International Law
  • Intellectual Property Law