IN THE COURT OF APPEAL

ON APPEAL FROM THE HIGH COURT OF UTOPIA

Between
SKUYLER FINN ENTERPRISES, LLC and
SKUYLER FINN (SFE) Appellant (The Defendants)
~And~
BLUE FIN SURF SPORTS, INC, (BFSS) Respondent (The Claimant)
APPELLANTS’ SKELETON ARGUMENT
 This is an Appeal against High Court of Utopia’s (HC) order granting preliminary injunction
restraining SFE from using the word BLUE, either by itself or in conjunction with “SKUYLER
FINN” as a trademark, brand name, or any other designation for any article for, or connected with,
any “board” activity or sport.
 The factors to be considered before granting preliminary injunction are likelihood of success on
merits, irreparable harm, balance of convenience and public interest. The HC did not properly
consider these factors before granting the preliminary injunction.
HC ERRED IN GRANTING PRELIMINARY INJUNCTION AS THERE WAS NO LIKELIHOOD OF SUCCESS ON BFSS’
CLAIM OF TRADEMARK INFRINGEMENT

The Trademark infringement claim herein hinges on two major questions. The question of likelihood
of confusion u/s. 100(2) UTMA and the availability of the defence of earlier right u/s. 101 UTMA. It
also hinges on the proving prima facie invalidity of SFE’s registration. [The Indian Hotels Ltd. v.
Ashwajeet Garg]
HC ERRED IN FINDING A LIKELIHOOD OF CONFUSION PURSUANT TO S.100(2) UTMA

 S.100(2) UTMA is identical to harmonized EU Trademark Law. Cases such as Sabel v. Puma, Canon
v. MGM, Lloyd Shufabrik Meyer v. Klijsen Handel, Marca Mode v. Adidas AG and Medion AG v.
Thomson Multimedia Sales Germany have interpreted the phrase “likelihood of confusion on the part
of the public, which includes the likelihood of association” and has laid down the factors to be
considered by the Court. Macro-Factors to be considered are degree of similarity of marks, degree of
similarity of goods or services and overall assessment of likelihood of confusion. There are Micro-
factors to be considered within each of these factors. HC did not properly consider these factors.
 There is no visual, aural or conceptual similarity between the marks. HC wrongly found similarity by
Composite marks are supposed to be analysed as a whole, except when there is dominant component
and other components are negligible [OHIM v. Shaker].
 There is no similarity between the goods of BFSS and SFE as NICE Classification is for
administrative purposes. Surfboards and snowboards are not similar simply by virtue of falling within
Class 28. Alcoholic beverages are not automatically considered to be similar either, especially in view
of the extensive range of alcoholic beverages and their different method of production, ingredients,
and intended use. Rums and Wine were held not to be similar in Montebello v. OHIM; Rioja Wine
and Port Wine were held not to be similar in Bodegas Franco v. OHIM. Similarly, all boards used in
various sports cannot be held to be similar.
 Absolute requirement of certain degree of similarity of marks and certain degree of similarity of
goods or services was not met before proceeding with overall assessment of likelihood of confusion
[Vedial SA v. OHIM].
 There is no likelihood of confusion based on an overall assessment of likelihood of confusion which
considers factors such as strength of the senior mark, family of marks, actual confusion, junior user’s
bad faith, trade channels and level of sophisticatedness of consumers. The senior mark is descriptive
of the nature of goods. BFSS cannot claim that there is a family of marks based on its use of two
marks with the prefix ‘BLUE FIN’ [Ponte Finanziaraia SpA v. OHIM]. Evidence of Actual Confusion
must be confusion of potential customers. [Imon Inc v. ImaginOn Inc]. The Trade Channels factor was
 already found in favour of SFE. When there is a range of consumers, the likelihood of confusion must
be analysed

HC ERRED IN FINDING EARLIER RIGHT WITH BFSS

 Application of the doctrine of natural zone of expansion was not warranted. Test laid down in Mason
Engineering v. Mateson Chemical Corp is not satisfied primarily because shift from retail of
surfboards and related goods to manufacture of surfboards requires technical know-how which
amounts to diversification, and not a case of Natural Zone of Expansion. Moreover, doctrine is
applied only in the case of strong marks [W.E. Kautenberg Co. v. Ecko Products] and where the mark
was used on the entire output of the user rather than on a particular class [Stardust, Inc. v. Weiss]
 BFSS cannot claim constructive use of BLUE FIN BY LULU mark based on the use of BLUE FIN
SURF SHOP mark as doctrine of tacking is not available to BFSS on application of test as laid down
in Van Dyne-Crotty Inc. v. Wear-Guard Corporation and Navistar International Transportation
Corp. v. Freightliner Corp. BFSS did not claim an earlier priority date pursuant to S. 72 UTMA.
 Correct interpretation of S. 101 UTMA in consonance with case law and international jurisprudence
would show that SFE has the earlier right. The term ‘continuously used’ in S. 101 UTMA should be
interpreted to include constructive use in light of S. 72 UTMA. Even literal interpretation of S. 101
UTMA would show that SFE has an earlier right to the disputed marks.
 BFSS can at best deny existence of SFE’s earlier right. HC has wrongly found that BFSS has an
earlier right. In the contrary, BFSS needs to establish that SFE was not entitled to registration of
SKUYLER FINN BLUE mark to be entitled to relief before the court as registration is prima facie
proof of validity of Trademark.
HC ERRED IN GRANTING PRELIMINARY INJUNCTION AS THE EQUITABLE CONSIDERATIONS DID NOT WEIGH
IN FAVOUR OF BFSS
 There exists no irreparable harm to BFSS. Irreparable injury is one that cannot be undone by
monetary damages and harm that is speculative will not support injunctive relief. [American Trucking
Associations, Inc. v. City of Los Angeles]. In the present case, the rumours or concerns regarding the
product safety of SFE’s snowboards were quickly resolved. Therefore, the incidents regarding
prospective customers questioning the safety of BFSS’s surfboards cannot be attributed to irreparable
injury to BFSS in substantiating the grant of preliminary injunctive relief.
 The Balance of Equities does not tip in favour of BFSS. A preliminary injunction is granted where the
threatened injury out-weighs any damage that the injunction may cause the opposing party and where
the factors appear to be evenly balanced, it is a counsel of prudence to take such measures as are
calculated to preserve the status quo. When the effect of the injunction would be a change of name by
the defendants, with the result that they would be unlikely to be able to return to that name if they
were to succeed in the action, the status quo would not be maintained. [Blazer v. Yardley]
 Public Interest is disserved by the grant of the injunction. While assessing the effect of the injunction
on public interest, the indirect hardship caused to those affected by the grant of the injunction is also
relevant [Golden Gate Restaurant Association v. City & County of San Francisco] and therefore,
harm caused the public at large including the sporting goods stores that have obtained the surfboards
must also be taken into account.
 IN THE COURT OF APPEAL
ON APPEAL FROM THE HIGH COURT OF UTOPIA
Between
SKUYLER FINN ENTERPRISES, LLC and
SKUYLER FINN (SFE) Appellant (The Defendants)
~And~
BLUE FIN SURF SPORTS, INC, (BFSS) Respondent (The Claimant)
RESPONDENT’S SKELETON ARGUMENT
INTRODUCTION
 This is an Appeal against High Court of Utopia’s (HC) order granting preliminary injunction
restraining SFE from using the word BLUE, either by itself or in conjunction with “SKUYLER
FINN” as a trademark, brand name, or any other designation for any article for, or connected with,
any “board” activity or sport.
 The HC was right in granting preliminary injunction by correctly applying the proper standard or test
for granting preliminary injunction.
HC WAS RIGHT IN GRANTING PRELIMINARY INJUNCTION AS THERE WAS LIKELIHOOD OF SUCCESS ON
BFSS’ CLAIM OF TRADEMARK INFRINGEMENT.

The Trademark infringement claim herein hinges on two major questions. The question of likelihood
of confusion u/s. 100(2) UTMA and the availability of the defence of earlier right u/s.101 UTMA.

HC WAS RIGHT IN FINDING A LIKELIHOOD OF CONFUSION

 S.100(2) UTMA is identical to harmonized EU Trademark Law. Cases such as Sabel v. Puma, Canon
v. MGM, Lloyd Shufabrik Meyer v. Klijsen Handel, Marca Mode v. Adidas AG and Medion AG v.
Thomson Multimedia Sales Germany have interpreted the phrase “likelihood of confusion on the part
of the public, which includes the likelihood of association” and has laid down the factors to be
considered by the Court. Macro-Factors to be considered are degree of similarity of marks, degree of
similarity of goods or services and overall assessment of likelihood of confusion. There are Micro-
factors to be considered within each of these factors. HC properly considered these factors.
 There is visual, aural or conceptual similarity between the marks. Although Composite marks are
supposed to be analysed as a whole except when there is a dominant component and other
components are negligible [OHIM v. Shaker], HC’s finding of similarity is justified on analysing
similarity by applying Thomson Life Doctrine.
 There is similarity between the goods of BFSS and SFE as reference is made to NICE classification as
an element of importance to the assessment of similarity of goods/services [Avex v. OHIM]. Even if
goods are neither complimentary or competitive, court finds similarity if similarities outweigh
differences [Apple Computer, Inc. v. OHIM].
 Absolute requirement of certain degree of similarity of marks and certain degree of similarity of
goods or services was met before proceeding with overall assessment of likelihood of confusion.
 There is likelihood of confusion based on an overall assessment of likelihood of confusion which
considers factors such as strength of the senior mark, family of marks, level of sophisticatedness of
consumers, actual confusion, junior user’s bad faith and trade channels. HC’s analysis of last three
factors was sufficient as evidence of Actual confusion is often difficult to obtain at the preliminary
stage and any such evidence is substantial evidence [Tisch Hotels Inc. v. Americana Inc.]. Evidence of
actual confusion relied upon by BFSS was not challenged by SFE. In Burgerista Operations v.
Burgista Bros, Court relied upon unchallenged evidence to find likelihood of confusion.
 HC WAS RIGHT IN FINDING EARLIER RIGHT WITH BFSS
 SFE’s priority date is September 19, 2010, whereas the priority date for the BFSS’s BLUE FIN BY
LULU mark is April 12, 2010. Since 1978, BFSS was previously engaged in retail services for
surfboards and related paraphernalia, the expansion from retail to manufacture of surfboards, which
has been accepted to be normal in the course of trade, falls within the natural zone of expansion for
BFSS, therefore protection must be extended to the products sold under the mark BLUE FIN BY
LULU [Brinkmann Corp. v. Optronics, Inc.,]  BFSS had plans for expansion much before the
priority for BLUE FIN BY LULU, as evidenced from their publication on HelpUsSelect.com website.
[Viking Boat Co., Inc. v. Viking Camper Supply, Inc.,]
 The facts of the present case satisfy the tests laid down in Mason Engineering & Design Corp. v.
Mateson Chemical Corp. The nature and purpose of goods and services, the channels of trade and
customers remain the same. The expansion does include new technology and know-how but this
factor does not weigh heavily in comparison to the other factors.
 Further, the defence under Section 101, Utopian Trademarks Act is unavailable to SFE as the
registered SKUYLER FINN BLUE mark was not continuously used the mark in relation to those very
good and services. [Everest (Long Eaton) Ltd v. P Camm Ltd.] 
HC WAS RIGHT IN GRANTING PRELIMINARY INJUNCTION AS THE EQUITABLE CONSIDERATIONS WEIGHED IN
FAVOUR OF BFSS

 BFSS is subject to irreparable harm in the absence of a preliminary injunction: Irreparable harm
cannot be remedied by an award of monitory damages and is likely to occur as a result of the inferior
nature of the defendant’s product. [Seligco Food Corp. Atlantic Processing, Inc.]. Moreover, proof of
actual injury is not necessary to establish irreparable injury [Commerce Foods Inc. v. PLC Commerce
Corp.] In the present case, BFSS faces actual and imminent harm owing to the unusually large
number of incidents of prospective customers questioning the safety of its surfboards, shortly after the
reports on the Consumer Watchdog Commission’s product safety concerns regarding SFE’s
snowboards. The most corrosive and irreparable harm attributable to a trademark infringement is the
inability of the plaintiff to control the nature and quality of the defendant’s goods. [Processed Plastics
Co. v. Warner Comm.]
 Balance of Equities tips in favor of the Respondents: The threatened injury to the Plaintiff i.e. the
damage to the goodwill and reputation of BFSS, owing to its inability to control the nature and quality
of SFE’s snowboards, outweighs the damage that may arise to SFE, on the grant of the preliminary
injunction since SFE is not prohibited from providing its services to the public.
 Public interest is unharmed by the preliminary injunction: The preliminary injunction will not
deprive the public of the services that it is currently receiving from SFE. In contrast, the preliminary
injunction will protect the public from confusion that is currently prevailing.