It’s a jingle out there as mattress sellers battle

Sleep Country suing Sears over slogan

A judge has temporarily blocked Sears Canada Inc. from using the marketing slogan “there is no reason to buy a mattress anywhere else” because it too closely resembles the trademarked jingle used by specialty retailer Sleep Country Canada Inc.

Sleep Country is suing Sears in the Federal Court of Canada, alleging the department store chain’s slogan infringes the specialty chain’s trademarked catchphrase, “Why buy a mattress anywhere else?”

A federal court has yet to make a final ruling on Sleep Country’s claim. But in a ruling issued in Ottawa on Feb. 9, Justice Catherine Kane granted a temporary or inter- locutory injunction that orders Sears Canada to refrain from using its marketing slogan until the case is decided at trial.

Under Canadian law, a party seeking an interlocutory injunction must establish that it will suffer irreparable harm if the alleged infringement is allowed to continue until the case is finally determined on its merits. Kane concluded that Sleep Country met that standard.

“For the purpose of this motion, I find that Sleep Country has established on a balance of probabilities that confusion is likely, as is depreciation of goodwill and loss of distinctiveness, between now and the determination of the infringement action, and that loss of sales and/or other damages will result,” Justice Kane writes.

Sleep Country has 234 stores and 17 distribution centres across Canada. Founded in 1994, the retailer’s “Why buy a mattress anywhere else?” jingle is a ubi- quitous feature of radio and TV ads. The Huffington Post once ranked it one of Canada’s 25 catchiest jingles, the judge noted, and it has even been inducted into the marketing Hall of Legends and Retail Council of Canada Hall of Fame.

Sears began using the “there is no reason to buy a mattress anywhere else” as a “descriptive statement” in online ads, radio spots, and printed flyers last summer.

Lawyers for Sleep Country sent Sears a cease-and-desist letter on Aug. 2. Sears denied any trademark infringement, so Sleep Country filed suit.

Sleep Country argues the two marketing slogans are so “strikingly similar” they might confuse consumers. Sears counters that Sleep Country has no clear evidence of confusion, depreciation of goodwill or loss of distinctiveness.

A full-blown trial is not expected for at least 18 months.