Canada: What's In A Slogan? Federal Court Issues Interlocutory Injunction In Trademark Infringement Case

Last Updated: March 1 2017
Article by Julia Kelen

Most Read Contributor in Canada, October 2018

In Sleep Country Canada Inc. v. Sears Canada Inc., 2017 FC 148, the Federal Court granted an interlocutory injunction restraining Sears Canada Inc. ["Sears Canada"] from using the slogan "There is no reason to buy a mattress anywhere else".

Sleep Country Canada Inc. ["Sleep Country"] owns two Canadian trademark registrations for the slogan "WHY BUY A MATTRESS ANYWHERE ELSE?". The slogan, and its accompanying musical jingle, have been used by Sleep Country in television, print, radio, and online advertising and promotional campaigns since 1994. 

In response to Sears Canada's adoption and use of its slogan, Sleep Country filed an action for trademark infringement, and subsequently a motion for an interlocutory injunction alleging that Sears Canada's continued use of the slogan pending the determination of the trial would result in confusion in the market, depreciation of goodwill, and the irrevocable loss of distinctiveness to Sleep Country's registered trademarks. The primary issue in the interlocutory injunction motion was whether Sears Canada's continued use of its slogan would result in irreparable harm to Sleep Country.

3-part interlocutory injunction test

In RJR-MacDonald Inc. v. Canada, the Supreme Court set out the three elements that must be established in order for an interlocutory injunction to be granted, namely, that (1) a serious issue has been raised; (2) that irreparable harm will result if the injunction is not granted; and (3) that the balance of convenience favours the requesting party.  Historically, interlocutory injunctions have been very rarely granted in trademark infringement cases, often because the alleged harm is found by the court to be quantifiable and not therefore "irreparable" 

Determination that harm is "irreparable"

The determination of irreparable harm is a factual assessment that must be established by the evidence.  It cannot be based on speculation or inferred from the facts.  In this case, the Court was persuaded by the expert evidence presented by Sleep Country that on a balance of probabilities Sears Canada's continued use of the slogan would result in trademark confusion, loss of distinctiveness, and damage to Sleep Country's goodwill.  The Court accepted that Sleep Country had established with clear and non-speculative evidence that the harm it would suffer as a result of Sears Canada's use was unquantifiable and not compensable in damages.

Sleep Country relied on evidence from experts in the field of marketing, brand management, and accounting.  The opinions were supported by marketing studies and research in consumer behaviour.   The evidence established that Sleep Country's slogan was well-known in Canada.  Due to the qualitative and subjective nature of the slogan and its effect on consumer behaviour, Sleep Country's experts argued that it would be impossible to isolate and quantify the slogan's impact on brand value or sales.  As described by one expert, "the big difference here is that we are measuring an idea that is a feeling to the customer, rather than something that inherently affects sales directly". If a slogan is meant to trigger a response from a consumer, and the consumer is unable to link the slogan to a single source, then the value, impact, and distinctiveness of the slogan is lost.  Once lost, the experts argued that it would be impossible to recover.

Sears Canada argued that the complexity or difficulty in calculating a potential harm does not result in an impossibility of quantification.  So long as there is some reasonably accurate way of measuring the damages, the harm is not irreparable. 

Sears Canada relied on expert evidence that it would be possible to calculate Sleep Country's losses using historical sales information, with adjustments for the other factors.  The expert theorized that it could "parse out" the effect of Sears Canada's use of its slogan on both Sears Canada's and Sleep Country's mattress sales. Despite the expert evidence put forward by Sears Canada, the Court ultimately held that applying the proposed quantification methodology would be difficult and uncertain to the point of impossibility.

The Court's Holding

The Court accepted that Sleep Country had established, on a balance of probabilities, both confusion and loss of distinctiveness.  The Court stated that while confusion does not automatically result in the loss of distinctiveness, where there is a loss of distinctiveness, damage to goodwill is not possible to calculate. The Court found that Sleep Country's evidence of harm was not speculative, but rather was based on and supported by fundamental marketing principles, foundational research in marketing econometrics, consumer behaviour, and learning theory. Having found that Sleep Country had established irreparable harm and that the balance of convenience was in Sleep Country's favour, the court granted the requested injunction.

Take Away

This case is instructive of the type and nature of evidence required to support a motion for an interlocutory injunction in a trademark infringement case. In particular, it demonstrates that where a loss of distinctiveness and damage to goodwill can be established with concrete and non-speculative evidence, the Court is more likely to find that the harm suffered is irreparable.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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.

Similar Articles
Relevancy Powered by MondaqAI
McMillan LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
McMillan LLP
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