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 shows how ordinary business practices, including domain names, abbreviated brand references, shop signage and social media hashtags, can amount to trade mark infringement.
The dispute concerned the registered trade marks POOL PRO and a related composite logo, on the one hand, and the respondent’s use of PRO POOL in connection with a Melbourne pool servicing business, on the other. Although the competing expressions contained the same words in reverse order, the Court found that PRO POOL was deceptively similar to POOL PRO and had been used as a trade mark in several commercial contexts.
The Court restrained further use of PRO POOL and associated composite marks and awarded $60,000 in damages, calculated by reference to the licence fee that would reasonably have been payable for the use of the registered marks. Importantly, the injunction did not extend to the respondent’s full corporate name, PRO POOL SERVICES, because the applicant’s pleaded infringement case had been confined to the abbreviated expression PRO POOL and the related logo.
Background to the Dispute
The applicant, The Pops Group Pty Ltd as trustee for The Pool Shops Trust, operates the Pool Pro business. The business was founded in 1993 and manufactures and supplies pool chemicals, pumps, filters, cleaning equipment, lighting, testing products and other pool-related goods.
By June 2025, Pool Pro supplied products to approximately 900 retailers across Australia, Fiji and the Solomon Islands, employed around 70 staff and recorded annual turnover of approximately $40 million.
The registered owner of the trade marks was Pool Pro (Aust) Pty Ltd, a related company joined as the second respondent. The relevant registrations included:
- Trade mark no. 784050 for POOL PRO, registered across several classes, including Class 37 for swimming pool and spa maintenance services.
- Trade mark no. 785737 for POOL PRO in Class 35, covering the retailing and wholesaling of pool and spa chemicals and equipment.
- Trade mark no. 1425503 for a composite Pool Pro logo featuring the words POOL PRO and a water droplet device.
The first respondent, Pro Pool Services Pty Ltd, operated a much smaller business in metropolitan Melbourne. It provided pool cleaning, maintenance and repair services and sold replacement pool components. The company was registered in March 2013.
Its managing director, Mr Sharp, explained that the name Pro Pool Services had been selected because it described the nature of the business. The word “pro” was intended as an abbreviation for “professional” and was thought to convey professionalism while making the name easier to remember.
Before adopting the name, Mr Sharp and his business partner consulted their accountant and searched the ASIC and ABN registers. They did not, however, search the Australian Trade Mark Register or obtain legal advice concerning the availability of the proposed brand.
The business generally operated under the full name PRO POOL SERVICES. However, the evidence revealed several occasions on which that name had been shortened to PRO POOL or PRO POOLS. These abbreviated uses became the central focus of the infringement case.
Before considering infringement, the Court addressed a significant procedural issue.
The applicant’s originating application referred to PRO POOL SERVICES as an infringing mark. Its amended concise statement, however, defined the infringing conduct more narrowly. It alleged infringement through the use of:
- the words PRO POOL; and
- the words PRO POOL together with a water droplet device.
The concise statement did not clearly allege that the complete name PRO POOL SERVICES infringed the registered marks.
Justice Derrington held that the case had to be determined according to the allegations actually pleaded. This was particularly important because Pro Pool Services was unrepresented. A party, especially an unrepresented party, must be given a fair opportunity to understand and answer the case brought against it.
Accordingly, the Court did not decide whether PRO POOL SERVICES itself was deceptively similar to POOL PRO. The infringement analysis was confined to the shortened expression PRO POOL and the composite logo in which those words were prominently displayed.
This distinction later affected the scope of the injunction. Although the respondent was restrained from using PRO POOL and related composite marks, it was not restrained from using its full corporate name.
Standing as an Authorized User
The respondent also challenged the applicant’s standing to commence infringement proceedings.
The registered marks were owned by Pool Pro (Aust) Pty Ltd, rather than by The Pops Group itself. There was no formal written licence between the companies authorising The Pops Group to use the marks.
The Court nevertheless found that The Pops Group was an authorised user within the meaning of sections 8 and 26 of the Trade Marks Act 1995.
Mr Sean Ralph was the sole director of both companies. In those circumstances, the Court considered it commercially unrealistic to suggest that The Pops Group had used the marks merely with the passive acquiescence of their registered owner. The common directorship and unity of commercial purpose supported an inference that the use occurred with the owner’s knowledge, consent and authority.
An unwritten licence could therefore be inferred, giving The Pops Group standing to bring the infringement action.
While that conclusion assisted the applicant in this case, brand-owning groups should not treat it as a substitute for proper documentation. Written licences and clear quality control arrangements remain the safer means of establishing authorised use, particularly where different companies hold, operate or license a trade mark portfolio.
When did PRO POOL Function as a Trade Mark?
The first substantive question was whether the respondent had used PRO POOL “as a trade mark”.
A sign is used as a trade mark when it performs a branding function. It must distinguish the goods or services of one trader from those of others and operate as a badge of commercial origin.
Whether a sign performs that function depends on context. A descriptive expression may still be used as a trade mark, and the presence of a dominant corporate brand does not necessarily prevent another word or expression from performing an independent branding function.
The applicant relied on four principal categories of use.
The domain name as a digital shopfront
Since 2013, the respondent had operated a website at propool.com.au.
The Court accepted that simply registering a domain name does not necessarily amount to trade mark use. The position changes, however, where the domain name directs customers to a website through which goods or services are promoted, offered or sold.
In that setting, the domain name can perform the same function as signage placed above a physical shop. It directs customers to a commercial source and identifies the business operating within.
The respondent’s website allowed visitors to view its pool services, purchase products and contact the business. The domain name was therefore more than a technical internet address. It was a digital shopfront.
The Court also considered that PRO POOL was an obvious contraction of PRO POOL SERVICES. Consumers would understand the shortened expression as identifying the same commercial source as the full business name.
The use of propool.com.au therefore amounted to use of PRO POOL as a trade mark. The Court observed that the same reasoning could potentially apply to email addresses incorporating the domain, depending on how those addresses were presented and used.
Abbreviations within the website
The respondent’s website generally identified the business as Pro Pool Services. That was the dominant brand on the homepage and across much of the site.
There were, however, several shorter references within the website, including:
- “Call Pro Pools today”
- “At Pro Pools, we assess the individual needs of your pool”
- “Pro Pools Quality Installation”
The respondent argued that the website had to be considered as a whole and that the dominant use of PRO POOL SERVICES prevented the shorter references from functioning independently as trade marks.
The Court disagreed.
An ordinary consumer would understand PRO POOLS as an informal contraction of PRO POOL SERVICES. The abbreviated expression appeared directly in the promotion of the respondent’s services and identified the source from which those services were available.
Although the longer name remained the dominant brand, that did not deprive the abbreviated version of its own branding function. The shorter references therefore constituted use of PRO POOL as a trade mark.
Hashtags and Social Media Use
The applicant also relied on two hashtags used in Facebook posts, #propools and #propoolrescue.
The Court reached different conclusions in relation to each.
The hashtag #propools appeared on a Facebook account named Pro Pool Services. In that context, consumers were likely to understand it as a contraction of the business name. The Court recognized that hashtags are now an accepted method by which businesses identify and distinguish their brands on social media. The hashtag therefore functioned as a badge of origin.
By contrast, #propoolrescue was treated as descriptive. In the context of a post concerning work performed on a swimming pool, the expression conveyed the idea of a “professional pool rescue”. Its focus was on the service performed rather than on the commercial source of the service.
The distinction highlights the contextual nature of trade mark use. A hashtag is not automatically a trade mark merely because it contains a business name or branded phrase. Its meaning, presentation and relationship to the surrounding content remain critical.
The retail premises and composite logo
Between 2017 and 2020, the respondent operated retail premises with signage displaying the expression PRO POOL SHOP.
The Court considered “shop” to be descriptive of the function of the premises. It was PRO POOL that identified the commercial source of the goods and services offered there.
The signage therefore involved use of PRO POOL as a trade mark.
A similar conclusion was reached in relation to the respondent’s logo. The logo displayed PRO POOL prominently, together with a water droplet device, while the word SERVICES appeared in a less prominent position.
The dominant visual message was PRO POOL. The word SERVICES merely described the nature of the business. Consumers were therefore likely to understand PRO POOL, together with the water device, as the principal badge of origin.
Reversing the words did not avoid deceptive similarity
Having found trade mark use, the Court compared PRO POOL with the registered POOL PRO marks.
The applicant argued that the expressions were substantially identical because they contained the same two words. The Court rejected that argument.
Substantial identity requires a side-by-side comparison. The order in which words appear contributes to the overall visual and cognitive impression of a mark. Reversing POOL PRO to PRO POOL created a sufficient difference to prevent a finding of substantial identity.
The marks were nevertheless found to be deceptively similar.
Deceptive similarity does not involve a side-by-side comparison. It asks whether a consumer with an imperfect recollection of the registered mark might reasonably be confused or left in doubt as to whether the marks identify the same or related traders.
In this case, a consumer was likely to remember the words POOL and PRO, but not necessarily their precise sequence. Both marks conveyed the same general idea of professionalism in relation to swimming pools.
The particular nature of the words reinforced the risk. POOL and PRO are both short, monosyllabic words beginning with the letter “P”. When combined in a two-word expression, their order was less likely to be remembered accurately.
The reversal of the words was therefore not enough to dispel the resemblance. The Court found a real and tangible danger that consumers would wonder whether POOL PRO and PRO POOL represented the same business or commercially connected businesses.
The same conclusion applied to the composite logos. Although the water droplet designs and arrangement of the words were not identical, consumers with an imperfect recollection were likely to remember the dominant combination of POOL, PRO and a water droplet, without recalling the exact arrangement or details.
Why did the good faith defences fail?
The respondent relied on several statutory defences, including good faith use of its name, descriptive use, entitlement to registration and continuous prior use.
None succeeded.
A significant part of the respondent’s case was that Mr Sharp had been unaware of the Pool Pro trade marks when the business name was selected. He had searched the ASIC and ABN registers and had relied on an accountant to confirm that the corporate name was available.
The Court held that this was insufficient to establish good faith for the purposes of section 122 of the Trade Marks Act.
Good faith required more than subjective honesty or an absence of deliberate copying. A person seeking to rely on the defence must have taken the steps that an honest and reasonable trader would take to determine whether the proposed sign conflicted with an existing registered trade mark.
Checking company and business name registers did not answer that question. Those registers serve different purposes and do not determine whether use of a name may infringe another party’s trade mark rights.
A search of the Trade Mark Register would have revealed the POOL PRO registrations. Alternatively, the respondent could have obtained trade mark advice before adopting and using the brand.
The failure to undertake either step meant that the respondent could not establish the reasonable diligence required for the good faith defences.
The prior use defence was also unavailable. The respondent began using its marks in 2013, well after the textual POOL PRO marks had been registered in 1999 and the composite mark had been registered in 2011.
Trade Mark Infringement and Misleading Conduct
The applicant also alleged misleading or deceptive conduct under sections 18 and 29 of the Australian Consumer Law.
The Court’s treatment of this claim illustrates an important distinction between trade mark infringement and consumer law.
Trade mark infringement required the Court to examine whether the respondent had used a deceptively similar sign as a trade mark. The Australian Consumer Law required a broader assessment of the overall message conveyed by the conduct in its full context.
The signage at the physical premises, particularly the expression PRO POOL SHOP, was found to be misleading. Consumers could reasonably infer that the shop was operated by Pool Pro or was an authorised retailer, franchisee or licensee.
The respondent’s composite logo was also likely to convey an impression of commercial association, approval or affiliation.
The website produced a different result.
Although the domain name itself used PRO POOL, the website repeatedly and prominently identified the business as PRO POOL SERVICES. The Court considered that this information would dispel any mistaken impression created when a consumer first encountered the domain name.
The website could cause initial confusion or prompt questions, but that was not enough, in the Court’s view, to establish misleading or deceptive conduct once the website was assessed as a whole.
The Facebook posts also did not breach the Australian Consumer Law because they appeared under an account clearly named Pro Pool Services. In context, the hashtags did not represent that the business was Pool Pro or commercially connected with it.
The result is a useful reminder that the same conduct may infringe a registered trade mark without necessarily being misleading under the Australian Consumer Law.
Why did the passing off claim fail?
The applicant’s passing off claim failed because it could not establish the necessary reputation at the relevant dates.
Pool Pro had a strong reputation by the time of the proceedings. That, however, was not the relevant inquiry. Reputation had to be established when the respondent’s conduct commenced, principally in 2013 when the business and logo were adopted and in 2017 when the retail signage appeared.
The evidence showed that Pool Pro’s Victorian business had grown during that period. It did not establish that a substantial number of relevant consumers in greater Melbourne were familiar with the brand at the particular dates required.
Some advertising evidence related to trade publications aimed primarily at pool industry participants rather than ordinary pool owners. The Court was not prepared to assume that this industry reputation necessarily extended to end consumers.
Without sufficient evidence of reputation among the relevant purchasing public in 2013 or 2017, the passing off claim could not succeed.
Damages under the user principle
The Court assessed damages according to the “user principle”.
Under that approach, a trade mark owner may recover a reasonable sum for the unauthorised use of its property, even where it cannot prove a corresponding loss of sales or where the infringer cannot be shown to have earned a particular profit.
The Court assumes a hypothetical negotiation in which reasonable parties agree on the amount that should have been paid to make the use lawful. The question is not whether the parties would actually have entered into a license in practice.
Pool Pro produced a sample license deed under which licensees were ordinarily required to pay an annual fee of $10,000. The fee could be waived where at least 80 per cent of the licensee’s stock consisted of Pool Pro products.
The applicant also relied on expert evidence estimating losses of approximately $122,904. That calculation assumed that the respondent would have become a Pool Pro licensee or franchisee, stocked Pool Pro products and generated additional product profits for the applicant.
The Court rejected those assumptions. The infringement involved unauthorized use of the marks, not unauthorised sales of Pool Pro products. The user principle required the Court to value the use that had actually occurred, rather than construct a different hypothetical business relationship.
Damages were therefore calculated by applying the $10,000 annual license fee over the six-year limitation period from June 2018 to June 2024. This produced an award of $60,000, plus interest.
The Court declined to award additional damages under section 126(2). Although the respondent had continued to use the marks after receiving a cease and desist letter, it was entitled to defend its position in court. The infringement issues were reasonably contestable, and the conduct was not shown to be flagrant.
Commercial significance of the dispute
The decision has several practical consequences for businesses and trade mark practitioners.
First, registration of a company or business name does not provide clearance to use that name as a trade mark. ASIC and ABN searches answer questions about corporate and business name availability. They do not establish that commercial use of the name will not infringe registered trade mark rights.
Second, brand clearance should extend beyond the proposed formal name. Businesses should consider how the name is likely to be shortened in conversation, domain names, email addresses, social media handles, hashtags and shop signage. A full name may be relatively distinguishable while its natural abbreviation creates a much greater infringement risk.
Third, online use must be reviewed in context. A domain name can perform a trade mark function when it leads customers to a commercial website. Informal references within website copy can also act as badges of origin, even where the website consistently displays a longer and more prominent business name.
Fourth, careful pleading remains essential. The applicant succeeded in restraining PRO POOL, but the Court would not decide whether PRO POOL SERVICES infringed because that allegation had not been clearly advanced in the concise statement. The scope of final relief was correspondingly narrower.
Fifth, reputation evidence must be tied to the correct date, location and consumer group. Evidence of a strong present-day reputation will not necessarily establish the historical goodwill needed for passing off. Industry recognition may also be insufficient where the relevant purchasing class consists of ordinary end consumers.
Finally, the decision demonstrates the value of maintaining genuine licensing records. The sample license deed provided the Court with a concrete basis for valuing the unauthorized use. At the same time, damages evidence must remain anchored to the actual infringement. A user principle assessment is not an opportunity to assume a broader franchise, distribution or product-supply relationship that never existed.
The case shows how modest and seemingly informal brand use can carry substantial legal consequences. A shortened domain name, a shop sign or a single branded hashtag may appear commercially convenient. Where that shorthand moves closer to an existing registration, however, it may also become the very use that establishes infringement.
Contact us to learn more about how LexGeneris can assist you with all your intellectual property needs. You can also schedule a no-cost consultation with our team of expert IP Attorneys Australia, IP Attorneys India, and IP Attorneys New Zealand
