Pool Pro defeated Pro Pool

Why Reversing Words Does Not Always Avoid Trade Mark Infringement

The Federal Court's decision in The Pops Group Pty Ltd as trustee for The Pool Shops Trust v Pro Pool Services Pty Ltd (No 2) [2026] FCA 912 provides an important reminder that minor branding changes may not be enough to avoid trade mark infringement.

The applicant operated the well-known POOL PRO business and relied on three registered Australian trade marks. The respondent operated a Melbourne pool maintenance business known as Pro Pool Services. The dispute centred on the respondent's use of abbreviated branding including "PRO POOL", its domain name www.propool.com.au, website references, social media hashtags and signage.

Under section 120(1) of the Trade Marks Act 1995 (Cth), infringement occurs where a person uses as a trade mark a sign that is substantially identical with or deceptively similar to a registered mark in relation to the relevant goods or services.

The Court first considered whether the respondent was using PRO POOL as a trade mark. Importantly, not every use of words amounts to trade mark use. A trade mark functions as a badge of origin, meaning it identifies the source of products or services. The Court found that use of PRO POOL in the domain name, website, signage and certain social media posts performed this branding function and therefore constituted trade mark use.

The Court then compared POOL PRO with PRO POOL. While the marks were not substantially identical because the word order was reversed, the Court found them deceptively similar. The reasoning was that consumers often have imperfect recollection. Many would remember the words "pool" and "pro" but may not accurately recall their sequence. Because the two marks conveyed the same general concept and used the same words, there was a real and tangible risk that consumers would believe the businesses were connected.

The respondent attempted to rely on several statutory defences, including good faith use of its business name and descriptive use. However, those arguments failed. The Court adopted previous authority confirming that good faith requires reasonable diligence. Simply checking ASIC and ABN records was not enough. Businesses are expected to investigate the Trade Marks Register before adopting a brand.

The Court also awarded damages using the "user principle". Rather than proving actual financial loss, the Court assessed what a reasonable licence fee would have been for authorised use of the trade mark. Applying a licence value of $10,000 per year for six years resulted in damages of $60,000.

For business owners, the message is clear. Registering a company name does not create trade mark rights. Before launching a brand, business name, logo, website or social media profile, undertake proper trade mark clearance searches. Even seemingly small differences may not be enough if customers are likely to think two brands are related.