The merits of this case are not obvious
11 The present application was made against the background of the respondent, via its director, ostensibly paying insufficient attention to the carriage of the proceedings. This is likely to have given the applicant some false hope that its application would not be defended, and no issue would be raised by Mr Sharp. However, that was not to be.
12 Ultimately, when the matter came on for hearing, Mr Sharp appeared, with leave, to defend Pro Pool Services. Importantly, he filed an affidavit upon which he relied. Whilst the material contained within it was generally of poor quality, it does raise some relevant issues. In the first instance, he puts in issue whether Pro Pool Services' marks have infringed the registered marks of Pool Pro. Second, he put in issue whether Pro Pool Services has acted in good faith. In this latter respect, the evidence adduced falls short of what is required to establish that the defendant had so acted for the purposes of s 122(1)(a)(i) of the Trade Marks Act, though in the course of the hearing, Mr Sharp indicated that there may possibly be additional evidence which could be obtained to support that defence. That rather suggests that there exists some evidence which will become available were the matter to proceed to a full trial on all issues. In circumstances where the respondent is essentially unrepresented, careful consideration must be given to ascertaining whether, if the matter proceeded to trial, it would have no reasonable prospect of successfully defending the applicant's claims: see Garrett v Make Wine Pty Ltd (2014) 323 ALR 652, 675 [93].
13 Ultimately, there are a number of issues which would need to be determined to establish the infringements on which the applicant relies. Whilst it is possible in some cases that relatively simple issues might be resolved in the course of a summary judgment hearing, here, there are factual issues to be determined as to whether or not the "cognitive clues" in both the registered mark and the mark being used by the respondent share a degree of similarity that falls afoul of s 120 of the Trade Marks Act. That involves a variety of conclusions to be reached across the three different marks and for the different goods and services for which they are registered.
14 At a broad and general level, the words "Pro Pool Services" appear to have some important distinguishing features from the words "Pool Pro" which, prima facie, may indicate that no contravention has occurred. That is not necessarily the case, but the obvious point is that there are issues to be determined of that nature. Dr Eliades, on behalf of the applicant, advanced a number of submissions that, on a proper and full consideration of the decision in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379 (Pham), and its proper application, any descriptive differences between the marks - such as the word "services" - could be ignored for the purposes of determining infringement. Whilst that very well may be correct, reaching that conclusion would require numerous determinations based on a number of different evaluative considerations, some of which were identified in the course of submissions as being:
(a) It is necessary to make a determination about what are the "essential elements" or "dominant cognitive clues" of the respective marks;
(b) In that evaluation, it is necessary to distinguish those differences between the marks which are distinguishing features but not essential elements or dominant cognitive clues of the marks. As was said in Pham (at 392 [52]):
52 We do not accept IR's submission that ICI was positing a new and unprincipled test for determining substantial identity. The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is "a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person" (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.
(c) In the current case, it was appropriate to disregard the word "Services" in the Pro Pool Services mark because it was merely a generic descriptive word, but it was not appropriate to disregard the generic nature of each of the words "Pro" and "Pool";
(d) That because the words "Pool Pro", in that order, are not to be regarded as generic words because they passed the "examiner's test" and registration of the mark was allowed, the generic nature of the terms "Pro" and "Pool" used in that sequence is also not to be considered a use of generic words;
(e) That the differentiation between essential elements and mere differences was vital to the determination of infringement and requires careful consideration; and
(f) That there is no evidence that the use of a water droplet is a common feature of marks used in the pool service industry, such that its use in the present case might constitute a dominant cognitive clue and, even if that were not the case, a cross-claim challenging the registration of the mark would be required to raise the issue.
15 The foregoing are merely some of the issues which were raised in the course of the applicant's submissions as to the evaluative analysis required to reach a determination that an infringement has occurred.
16 It follows that, on this application for summary judgment, there is no clear identifiable pathway to granting judgment for the applicant. The matter is not of insignificant complexity; it requires substantially more time, and substantially greater analysis, than is available in the context of a summary judgment application. There are many authorities to the effect that, when a matter of some complexity arises in a summary judgment application, the Court has a discretion whether to resolve the complexity and reach the answer, or to hear the matter after a full hearing. Some are referred to above: cf Three Rivers District Council v Bank of England (No 3) [2003] 2 AC 1, 260 - 261. Whilst a judge may take up the challenge of granting summary judgment despite the existence of a not uncomplicated legal determination, they are not obliged to do so.
17 In general, it is probably preferable that this not occur where, in order to reach the necessary conclusion, the matter would have to be adjourned for some weeks and the material and relevant authorities considered in detail so that detailed reasons can be prepared: see, eg, Deco Australia Pty Ltd v Aliwood Pty Ltd [2021] FCA 1159.
18 Here, the conclusions that the applicant asks the Court to make are far from self-evident; the detail contained in both their written and oral submissions is a testament to that observation. In this context, I am satisfied that this is not a case that warrants the grant of summary judgment. The circumstances are such that it has not been shown that the respondent has no reasonable prospect of successfully defending the proceeding or part of it.
19 It became clear in the course of the hearing that there may exist other evidence available to the respondent, which it might seek to adduce in relation to the nature of the pool services industry and, particularly, the occasions on which the words "Pool" or "Pro" or any other words are commonly used in business names. The extent to which that will be relevant or determinative is a matter yet to be decided. Mr Sharp also mentioned the possible existence of evidence relating to what steps the respondent took to satisfy itself that there were, in fact, no marks registered which its name might infringe. He should be afforded the opportunity to secure that evidence.
20 In all of these circumstances, the application cannot succeed and should be dismissed.
21 The appropriate orders are:
(a) The applicant's application filed on 6 December 2024 be dismissed.
(b) The applicant's costs of the application filed on 6 December 2024 be reserved.
I certify that the preceding twenty-one (21) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Derrington.