How to Stop Grey Goods

By Louis S. Ederer and Andrew Bernstein

Published in Brand Management Focus 2004, April 2004.

The liberalization of international trade means big challenges for IP rights owners. Louis S. Ederer and Andrew Bernstein of Torys LLP analyze how brand owners can combat grey goods in Canada using trademark and other laws.

The liberalization of international trade in the past decade has been of tremendous benefit to North American businesses. However, it has also posed certain challenges, particularly for trademark owners whose products are sold in many countries. A trademark owner has the right, among other things, to authorize the making and selling of its products in particular countries, through particular trade channels. But trademark owners have been unable to control the diversion of goods, originally intended to be sold only in certain countries, to other countries where they were not intended to be sold. When imported into countries such as Canada and the United States, where