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Outlook good for rights holders seeking trademark injunctions

Originally published in

The bar for achieving an interlocutory injunction in trademark infringement matters may be coming down, Toronto intellectual property lawyer John Simpson tells The Lawyers Daily after a recent Federal Court decision.

The article notes that the judgment in Sleep Country Canada Inc. v Sears Canada Inc. 2017 FC 148 blocks Sears from using the marketing slogan, “There is no reason to buy a mattress anywhere else,” after Sleep Country argued it infringed on its own trademarked phrase: “Why buy a mattress anywhere else?”

In the story, Simpson, principal of Shift Law, says interlocutory relief has been traditionally difficult to achieve in the Federal Court, but this case shows it “is making it easier for an aggrieved party, whose trademark has been infringed, to prove that damages would be irreparable, that the harm caused by the infringement would be irreparable if this went on for another two years before it went to trial.”

Sleep Country enlisted a chartered accountant with expertise in intellectual property valuation to bolster its case that the damage caused to it by Sears’ use of the slogan could not be quantified, and was therefore irreparable, the article says, noting that the judge rejected the approach of Sears’ own expert.

Simpson told the legal news outlet the decision indicates judges will take a more realistic view on how to quantify losses caused by alleged trademark infringement.

“As a lawyer, the key thing I take from this case is that if I have an expert who is trying is to show this harm is reparable, then I would be very careful to make sure the expert describes all of the assumptions that they are making. There were a number of assumptions made by the defendant’s expert that needed to be supported by evidence. In this case, it was not. Experts must make their assumptions clear and support it by evidence," Simpson said.

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