Canada: Why Use This Slogan Anywhere Else?

Last Updated: February 15 2017
Article by Sarah Kilpatrick, Adam Chisholm and Peter Wells, C.S.

What happens when the owner of one of Canada’s catchiest jingles faces a new marketing campaign from a long-standing department store?

In a recent decision of the Federal Court, Sears Canada Inc. (“Sears”) was enjoined from using a slogan that was confusingly similar to Sleep Country Canada Inc.’s (“Sleep Country”) “WHY BUY A MATTRESS ANYWHERE ELSE?”. The judgment in Sleep Country Canada Inc. v. Sears Canada Inc.1 is noteworthy as a recent case granting an injunction against infringing on a trademark.


Sleep Country has used the trademark “WHY BUY A MATTRESS ANYWHERE ELSE” since 1994. The slogan has garnered national acclaim for its popularity and is the subject of two trademark registrations.

In July 2016, Sears began using the slogan “THERE IS NO REASON TO BUY A MATTRESS ANYWHERE ELSE” in its print and online advertisements. Despite requests by Sleep Country, Sears refused to cease use of the slogan, and an action for trademark infringement, depreciation of goodwill and passing off was initiated by Sleep Country. With the hopes of stopping Sears from using the slogan pending the outcome of the infringement action, Sleep Country sought an interlocutory injunction against Sears.2

Test for Interlocutory Injunctions

A party seeking an interlocutory injunction must successfully establish the following three elements:3

i.  that a serious issue has been raised;

ii.  that it will suffer irreparable harm if the injunction is not granted (i.e., harm which cannot be quantified); and

iii.  that the balance of convenience favours the party seeking the injunction.

Sears conceded that a serious issue had been raised and therefore the first part of the test had been met. As to part three of the test - balance of convenience - the Court found in favour of Sleep Country, given that it had used its mark for 22 years, Sears had only recently commenced use and could revert to its pre-slogan marketing approach and as there is a “public interest” in protecting trademarks.

As a result, the Court focused its attention on what is often cited as the most difficult element of the test to satisfy: irreparable harm.

Irreparable Harm Established

The Court was of the view that there was indeed irreparable harm to Sleep Country, given the likelihood of confusion between the slogans and the resulting loss of distinctiveness in its slogan.

In conducting its confusion analysis, the Court found that the phrases were almost identical, they conveyed the same value proposition or ideas and the mattresses were sold in similar channels of trade in similar manners. The length of time that Sleep Country had used its slogan compared to Sears also favoured Sleep Country.4

As was noted in the decision of Centre Ice Ltd. v. National Hockey League,5 however, proving confusion alone is not sufficient to prove depreciation of goodwill or irreparable harm.6 Sleep Country argued and led expert evidence that the irreparable harm it would suffer would arise in two ways: (i) lost sales would be impossible to identify or quantify; and (ii) harm would occur through depreciation of goodwill and loss of distinctiveness of its slogan, which is an intangible harm not capable of quantification.7 In contrast, Sears argued that any damages suffered by Sleep Country, while perhaps difficult to quantify, were nevertheless quantifiable. Both parties led extensive expert evidence in this regard.

Justice Kane reiterated that difficulty in calculating damages is not tantamount to irreparable harm.8 While evidence of irreparable harm must be clear and non-speculative,9 the Court looked to the 2015 decision in Reckitt Benckiser LLC v Jamieson Laboratories Ltd.,10 where Justice Brown opined:

Where a confusing mark will cause a plaintiff’s mark to lose its distinctiveness, the damage to goodwill and the value of the mark is impossible to calculate monetarily.11 (emphasis added)

According to the Court, the present circumstances were distinguishable from other cases involving the sale of infringing products (where the quantum of damages may be more readily quantified). The present case dealt with an infringing “slogan” and not an infringing product.12

The Court considered one of Sears’ experts who was called to establish that Sleep Country’s damages could be measured. The Court held the expert did not provide a “reasonably accurate” way to measure Sleep Country’s damages. His model was undermined given the many variables or adjustments that would have to be made and the lack of current or future data.13 The Court was also critical of the expert’s reliance on unclear and unsupported assumptions.14 Ultimately Justice Kane concluded that Sears’ expert evidence on damage calculation “borders on the impossible and, as noted above, is based on flawed and unsupported assumptions”.15

In contrast, Sleep Country led evidence that it had never been able to properly quantify the financial impact that its successful slogan had on the value of its brand; nor could it calculate the sales attributable to the success of its slogan.16 Further, in these circumstances, relying on a disgorgement of profits was too speculative as Sears may not have profits resulting from its new marketing strategy and attributing profits to the use of the slogan would be problematic.17

This decision makes it clear that proving the irreparable harm necessary to obtain an injunction is difficult but not impossible. The case shows that to succeed, more is needed than a bare assertion that quantifying damages is impossible and one needs to demonstrate why it is true in the case at hand. Sleep Country’s unique evidence included information about its pre-litigation efforts to value its trademark. Its failure to come up with a satisfactory value assisted the Court in arriving at its conclusion that the task was indeed impossible.

In the end, the Court was of the view that Sleep Country did not rely on an “inference” that confusion would lead to loss of goodwill and harm - but rather Sleep Country had evidence of depreciation of goodwill and loss of distinctiveness.18 As a result, Sleep Country was granted its interlocutory injunction.

Practical Lessons From Sleep Country

Sleep Country contains some interesting legal and practical lessons for litigants. First, the judgment in the interlocutory order came after the opposite result had been reached in an interim injunction that had been argued on similar principles. As noted above, one of the differences that Justice Kane relied upon was that cross-examination of witnesses was not available during the interim injunction.

Second, Sleep Country applies recent Supreme Court jurisprudence19 that an expert is not required to prove confusion.20 That said, Justice Kane admittedly considered the expert evidence marshaled by the parties in relation to confusion21 and clearly used it to evaluate depreciation of goodwill and loss of distinctiveness.22

Third, Sleep Country emphasizes the importance of properly marshaling expert evidence. The Court was critical of one of Sears’ expert’s failure to abide by the Code of Conduct for Experts. The Court’s failure to accept that Sleep Country’s damages could be quantified was directly related to the evidence of which the court was critical.

Sleep Country demonstrates how costly an interlocutory injunction seeking to enjoin use of a trademark may be. In total, five persons were called as expert witnesses. The interlocutory injunction followed the interim injunction which had already been heard a few months before. While the decision on its merits is helpful to longtime trademark holders, significant resources appear to have been spent arriving at the outcome.


1 2017 FC 148 Sleep Country.

2 An earlier request by Sleep Country for an interim injunction (i.e., an injunction to take effect while the decision on the interlocutory injunction was pending) was dismissed on the basis that Sleep Country had not established irreparable harm. The Court in Sleep Country granted the interlocutory injunction anyway. The Court held that the decision in the interim injunction was not persuasive. The Court had a more fulsome record of evidence before it and cross-examinations had been conducted. In addition, the Court in Sleep Country considered the existence of irreparable harm over the period of time to trial compared with the few months between the interim and interlocutory injunction hearings. Lastly, the Court relied on the absence of detailed reasons in the interim injunction.

3 RJR-MacDonald v Canada (Attorney General), 1994 1 SCR 311, 111 DLR (4th) 385.

4 Sleep Country at para 94.

5 (1994), 53 CPR (3d) 50, 166 NR 44 (FCA).

6 Sleep Country at para 54.

7 Sleep Country at para 35.

8 Sleep Country at para 152.

9 Sleep Country at paras 28-29.

10 2015 FC 215, var’d on other grounds 2015 FCA 104.

11 Sleep Country at para 55.

12 Sleep Country at para 119.

13 Sleep Country at para 134.

14 Sleep Country at para 138.

15 Sleep Country at para 150.

16 Sleep Country at para 117.

17 Sleep Country at para 157.

18 Sleep Country at para 114.

19 See Masterpiece Inc., v. Alavida Lifestyles Inc., 2011 SCC 27.

20 Sleep Country at paras. 88-89.

21 Her Honour expressly stated this in para 94.

22 Sleep Country at paras. 100-109.

The foregoing provides only an overview and does not constitute legal advice. Readers are cautioned against making any decisions based on this material alone. Rather, specific legal advice should be obtained.

© McMillan LLP 2017

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Sarah Kilpatrick
Adam Chisholm
Peter Wells, C.S.
Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions