Peter Hanlon

This decision concerns an application for the registration of the trade mark OOMPHIES, which was initially refused by the Registrar of Trade Marks. The applicant appealed this refusal to Evershed J. The dispute centred on whether the trade mark should be registered, with the Registrar arguing for refusal on discretionary grounds, despite the mark potentially meeting other registration requirements.

The primary legal issue before the court was the extent of the Registrar's discretion to refuse a trade mark registration, particularly when the mark might be considered "salacious" or offensive to some, even if not explicitly prohibited by statute. The court was required to consider the principles governing such discretionary refusals under the United Kingdom's Trade Marks Act 1938, and how these principles might be interpreted in relation to public taste and susceptibilities.

Evershed J, in overturning the Registrar's refusal, adopted the proposition that the Registrar has a duty to consider not only the general taste of the time but also the susceptibilities of those who might be considered old-fashioned. However, the judge stressed that this statement arose under UK law and was not directly applicable to the Australian legislative context. The Registrar's refusal was based on a discretionary power under section 17 of the old UK Act, rather than a mandatory refusal under section 11 (contrary to morality). The Registrar's argument was that OOMPHIES could be refused in the exercise of discretion because it was "salacious" to some, even if otherwise registrable. The court noted that the Registrar did not argue that the mark was contrary to morality.