Pre-trial injunctive relief is rarely granted in Canadian trademark cases, as the harm caused by the alleged infringing activity is generally not considered irreparable in nature.  However, Justice Kane of the Federal Court recently granted an interlocutory injunction restraining Sears from using the phrase “THERE IS NO REASON TO BUY A MATTRESS ANYWHERE ELSE” or any other phrase or mark confusingly similar to Sleep Country Canada’s “WHY BUY A MATTRESS ANYWHERE ELSE” trademark.

To obtain an interlocutory injunction, the applicant must prove each element of a three part test.  The elements include: (i) that a serious issue is raised; (ii) that the applicant will suffer irreparable harm if the injunction is not granted; and (iii) that the balance of convenience favours the applicant.

Sears conceded for the purpose of this motion that a serious issue had been raised.  The Court found that confusion and a loss of distinctiveness were likely.  The Court considered that the loss of distinctiveness would damage Sleep Country Canada’s goodwill in its slogan that was not possible to calculate.  Given the short period of time that Sears had used the impugned slogan in contrast with Sleep Country Canada’s 22 year period of use, the Court found that the balance of convenience favoured Sleep Country Canada.  The interlocutory injunction was granted pending a final determination of Sleep Country Canada’s action for trademark infringement.

This decision makes it clear that proving irreparable harm is necessary and difficult, but not impossible.  To succeed, more than a bare assertion that quantifying damages is impossible is needed.  The applicant needs to demonstrate why quantifying damages is indeed not possible.

An interesting twist to note is that another judge had dismissed Sleep Country’s earlier motion seeking an interim injunction against Sears on the basis of of its use of the allegedly infringing slogan on the basis that Sleep Country had not established irreparable harm. In this decision, Justice Kane distinguished this earlier decision based on the amount of evidence presented and the different time period relevant for assessment.

An appeal of this decision was filed with the Federal Court of Appeal on 20 February 2017.

See full decision Sears and Sleep Country – Why Buy a Mattress Anywhere Else decision