Sleep Country Canada Inc. v. Sears Canada Inc.

Sleep Country Canada Inc. v. Sears Canada Inc.

The Court accepted Sears' concession of a serious issue, found on the balance of probabilities that confusion and depreciation of goodwill/loss of distinctiveness were likely, and concluded Sleep Country showed irreparable harm because, given the nature of the marketing mix, multiple concurrent changes and lack of reliable historical data, quantification of losses and apportionment to Sears' slogan would be infeasible or speculative; the balance of convenience favored Sleep Country; accordingly an interlocutory injunction prohibiting Sears' use of the impugned slogan pending final determination was granted.

Citation
2017 FC 148
Parties
Plaintiff/moving Party: Sleep Country Canada Inc.; Defendant/responding Party: Sears Canada Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
9 February 2017
Procedural Posture
Trade Marks Act Infringement / Interlocutory Injunction Motion (pre Trial)
Outcome
Interlocutory injunction granted
Legal Topics
Interlocutory Injunction, Irreparable Harm, Likelihood of Confusion, Depreciation of Goodwill, Damages Quantification, Balance of Convenience
Source Language
English
Intellectual Property Trade Mark Law Civil Procedure Interlocutory Injunction Irreparable Harm Likelihood of Confusion Depreciation of Goodwill Damages Quantification +1 more

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Parties

Sleep Country Canada Inc.

Plaintiff/moving Party

Sears Canada Inc.

Defendant/responding Party

Procedural Posture

Trade Marks Act Infringement / Interlocutory Injunction Motion (pre Trial)

Legal Issues

  1. 1 Whether a serious issue is raised on trade-mark infringement
  2. 2 Whether irreparable harm will result absent an injunction
  3. 3 Whether alleged harm can be quantified and compensated in damages

Ratio Decidendi

The Court accepted Sears' concession of a serious issue, found on the balance of probabilities that confusion and depreciation of goodwill/loss of distinctiveness were likely, and concluded Sleep Country showed irreparable harm because, given the nature of the marketing mix, multiple concurrent changes and lack of reliable historical data, quantification of losses and apportionment to Sears' slogan would be infeasible or speculative; the balance of convenience favored Sleep Country; accordingly an interlocutory injunction prohibiting Sears' use of the impugned slogan pending final determination was granted.

Court Disposition

Interlocutory injunction granted

Orders

  • Sears Canada Inc. and those acting under its control are prohibited from any use of the phrase "THERE IS NO REASON TO BUY A MATTRESS ANYWHERE ELSE" or any phrase confusingly similar to "WHY BUY A MATTRESS ANYWHERE ELSE?" in association with its business, wares or products until final determination of the action
  • Costs payable in the cause