The power of well-known slogans has been recognized once again in the Federal Court of Canada.
After 22 years of saturation advertising, most Canadians could readily fill in the blank for "Why buy a _______ anywhere else?". In fact, they could probably sing the jingle in its entirety. So when Sears Canada Inc. began a new campaign last summer with similar language, it was not surprising to see Sleep Country Canada Inc. asking for extraordinary remedies — including two forms of injunctive relief.
As part of a re-branding exercise in mid-2016, Sears began using the slogan "there is no reason to buy a mattress anywhere else". Sleep Country quickly applied for an interim injunction but the Court initially rejected their request, on the basis that it had not established irreparable harm, one of the critical factors required for an injunction. Undeterred, Sleep Country put together a more complete set of evidence, and their second application for a full-fledged injunction was successful in early February, 2017.
Until recently, interlocutory injunctions were notoriously difficult to obtain in trademark infringement cases. This began to change in 2015, when the Federal Court enjoined Jamieson Laboratories from selling a supplement called OMEGARED, which was viewed as a copy of Reckitt Benkiser's MEGARED registration. The unusual facts in that case made it possible for some commentators to view it as a one-off, but Sleep Country's victory confirms a new trend.
Sleep Country argued successfully that the confusing slogans would lead to a loss of distinctiveness if Sears were allowed to continue to use its infringing mark. The Court reaffirmed the 2015 Reckitt Decision that where a confusing mark would cause a plaintiff's brand to lose its distinctiveness, the resulting damage to goodwill and value will constitute irreparable harm (harm that cannot be compensated monetarily).
The Court distinguished between the harm caused by the sale of an infringing product and the harm from the use of an infringing slogan which was viewed as just one element in a multi-faceted marketing strategy. The quantification of Sleep Country's potential losses was viewed as difficult if not impossible. This was sufficient for the Court to hold that an interlocutory injunction should be granted. Significantly the Court recognized the need for a reasonable approach to assessing the quantification issue, noting that if the bar was set too high it would be impossible for brand owners to protect their marks until final determination at trial.
The Court also considered Sleep Country's 22 year history in using the slogan as compared to the much shorter period of use for Sears. Citing the public interest in protecting trademarks, the Court found that the balance of convenience favoured issuing the injunction.
This case is an important indicator that slogans – sometimes viewed as the poor cousins of product marks – can be powerful enforcement tools on their own, supporting extraordinary remedies in the competitive marketplace.
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