Blackadder v Good Roads Machinery Co Inc

The parties to this dispute were Edwin Roland Blackadder, the registered proprietor of the trade mark "Winner," and the Good Roads Machinery Co. Incorporated, a United States company. The Good Roads Machinery Co. sought to have Blackadder's trade mark expunged from the Register of Trade Marks. The case came before Starke J. in the High Court, and subsequently, Blackadder appealed to the Full Court of the High Court.

The central legal issues before the court were whether the registration of the trade mark "Winner" by Blackadder was valid, and if not, whether the Register of Trade Marks should be rectified by expunging the mark. Specifically, the court had to consider the circumstances surrounding the use of the word "Winner" in Australia by the respondent company, the appellant's knowledge of this use, and the appellant's intent in registering the mark. The court also considered whether the respondent was a "person aggrieved" by the registration and whether the appellant's registration was likely to deceive the public or was otherwise disentitled to protection.

The court reasoned that while the respondent's use of the word "Winner" in Australia had been limited and the word had been removed from imported machines by local importers, the respondent had conducted trade in Australia with machines bearing this mark. The court found that Blackadder, having been employed by companies that imported and dealt with the respondent's machinery, was aware of the respondent's use of the "Winner" mark in the United States and its limited use in Australia. The court concluded that Blackadder's object in registering the mark was not to fairly describe his own machines but to take advantage of the respondent's reputation and to prevent the respondent from using its own mark in Australia. This conduct was deemed likely to deceive the public and was contrary to the purpose of the Trade Marks Act, which was not designed to encourage unfair trading.

Consequently, the Full Court dismissed Blackadder's appeal, upholding the decision of Starke J. The court ordered that the Register of Trade Marks be rectified by expunging Trade Mark No. 37653. Blackadder was also ordered to pay the costs of the motion.