Use of Transposed Versions of Registered Trade Marks Held to Infringe

In The Pops Group Pty Ltd as trustee for The Pool Shops Trust v Pro Pool Services Pty Ltd (No 2) [2026] FCA 912 the Judge found three POOL PRO registrations were infringed by the use of several PRO POOL marks.

Background: 
The infringement action involved three registered trade marks: two being for the word mark POOL PRO covering pool and spa related goods and services in classes 1, 3, 5, 7, 9, 11, 25, 35 and 37, and a composite mark covering pool and spa related goods and services in classes 5, 6, 7, 8, 11, 19, 20, 21, 28 and 37. Those three registrations are all in the name of Pool Pro (Aust) Pty. Ltd. The founder’s son, Mr Ralph, is the sole director of that corporate entity as well as of two other corporate entities in the Pool Pro business group that use those marks. In the absence of evidence of a formal licence or other agreement between Pool Pro (Aust) Pty. Ltd and The Pops Group Pty Ltd at [41] the Judge applied precedent to find that Mr Ralph’s sole directorship of the corporate entities meant The Pops Group Pty Ltd had standing as an authorised user of the three registered marks.

The respondent is a pool cleaning, maintenance and equipment repair business that was incorporated in 2013, and which primarily uses the unregistered brands Pro Pool Services and a composite mark, and has the domain name www.propool.com.au.

The infringement action was commenced in response to several instances of the respondent dropping the “Services” element and making several references to itself as Pro Pool, Pro Pools, propool or propools. On its business premises it also prominently used composite marks with “Shop” substituted for “Services”.   On account of how the applicant pleaded the infringement action the Judge found that the applicant’s case did not extend to whether the expression “Pro Pool Services” infringed.

Court’s Decision: 
The Court found that in most of the instances where the “services” element had been dropped the respondent was using those expressions as trade marks given that they would likely be understood by an ordinary reasonable consumer as a contraction of “Pro Pool Services”. Likewise, the prominence of the PRO and POOL elements in the composite marks resulted in those marks also being found to be used as trade marks by the respondent.

The applicant alleged that the respondent’s marks were both substantially identical to and deceptively similar to their marks. However, the Judge held that the reverse order of the shared word elements and the differences in the respective composite marks precluded a finding of substantial identity between the party’s marks. The Judge, though, found basis for the deceptive similarity claim. It was found to be reasonably likely that a consumer with imperfect recollection could be deceived as they may remember the individual elements of the word marks but not the order in which they appeared or remember that the ‘Drop’ device element is to the left of the word elements but not the specific form of the device element. The Judge considered the likelihood of reasonable consumers being deceived was increased on account of both word elements being mono-syllabic and beginning with the same letter. Given the dominance of the word elements in the respondent’s composite marks they were also found to be deceptively similar to the applicant’s word marks.

Given that the respondent used its marks in relation to goods and services covered by the applicant’s registrations a prima facie case of infringement was established. The Judge then rejected all of the respondent’s defences. As the marks were used as trade marks the ‘descriptive use’ defences were not available. The respondent was also found to have not acted in good faith as only the companies register was searched not the trade marks register. The Judge also considered that if the respondent had sought registration of their marks those applications would have been rejected.

The Judge found the applicant to be entitled to a permanent injunction restraining further infringing use of PRO POOL and associated composite marks, but not the full business name Pro Pool Services. The applicant is also entitled to damages in the amount of $60,000, but not exemplary damages.

Concluding Remarks: 
This case shows the importance of checking at least both the companies register and the trade marks register. While not all transposed versions of registered marks will infringe, this case provides some considerations for when a transposed version will increase the likelihood of a finding of deceptive similarity on an imperfect recollection basis. The case also highlights the importance of clear pleadings, as the Judge held that the proceedings suffered from a distinct lack of precision. Had the applicant’s case been properly pled the permanent injunction would have also restrained the respondent from using the expression “Pro Pool Services”.

Authors: Quinn Miller and Jim Piper

//piperpat.com/news/article/use-of-transposed-versions-of-registered-trade-marks-held-to-infringe