In a significant decision issued last week, Sleep Country Canada Inc v Sears Canada Inc, 2017 FC 148, the Federal Court issued rare interlocutory relief to a Plaintiff in a trademark case.
An interlocutory injunction is an extraordinary and powerful remedy. But for over 20 years, interlocutory injunctions have been few and far between in the Federal Court (apart from counterfeit cases). However, for the past five years the Federal Court has sent informal signals to the intellectual property bar that it would be prepared to issue pre-trial injunctions on suitable evidence of irreparable harm.
In our 2015 IP Update, we discussed the first reported decision in many years where the Federal Court granted an interlocutory injunction in a trademark infringement case. However, the facts of that case were very specific since the defendant had launched its mark prior to the plaintiff as a calculated pre-emptive strike to undermine the plaintiff’s new brand.
In contrast, the present case of Sleep Country involves a much more traditional trademark infringement fact pattern in which the plaintiff’s 25 year old slogan “Why buy a mattress anywhere else?” was threatened by its competitor’s new slogan “There is no reason to buy a mattress anywhere else.” This reasoned decision, which is over 60 pages long, may now set out a roadmap to brand owners seeking pre-trial injunctive relief for trademark infringement in Canada.