Australia Day – the official national day of the land Down Under – is commemorated each year on 26 January. This was the day, in 1788, on which the First Fleet arrived at Sydney Cove, and British sovereignty was proclaimed over the eastern seaboard of Australia.
Of course, attitudes to colonialism are somewhat more ambivalent these days than they once were, and Australia Day is not universally celebrated. Each year there are groups of indigenous Australians, and their supporters, who mark the occasion with alternative “Invasion Day” protests.
But this article is less concerned with actual imperialism, and more with cultural imperialism –particularly the “invasion” of this country by that once all-American, but now global, fast-food chain known variously in its land of origin as McDonald’s, the Golden Arches and Mickey-D’s. Here in Australia, however, McDonald’s most prevalent nickname is “Macca’s”. A recent branding survey commissioned by McDonald’s Australia found that 55 per cent of Australians refer to the company by its local slang name.
It is fair to say that Australians have long had a complicated relationship with McDonald’s. On the one hand, it is recognised as a multinational corporation, headquartered in the United States, which has spread a particular form of instant gratification – and instantly-recognisable homogeneous branding – around the world. Even today, over 40 years after the first Australian McDonald’s store opened in Sydney, the perception remains that McDonald’s values are different from the values of ordinary Australians, and plans for the opening of new restaurants can still raise vocal protests in some communities.
On the other hand, McDonald’s operates primarily as a franchise business, with over two-thirds of Australian restaurants owned and operated by local business men and women. It sources produce from Australian suppliers. It is heavily involved in the community, including educational, sporting and charitable organisations. In 1993, the world’s first McCafe opened in coffee-mad Melbourne. McDonald’s Australia claims that its restaurants serve over a million customers every day. And, after four decades in the country, there are countless Australians who can say that they earned their first pay check flipping burgers, piloting the registers, or serving at the drive-through window at their local McDonald’s.
Of course, none of this happened by accident. McDonald’s is well aware of the challenges it faces in gaining acceptance within local communities. It has become a master of maintaining a consistent international brand image, while at the same time adapting its behaviours and communications at the national and local levels. And while McDonald’s may customise some items on its menu to local tastes, one thing that has never changed, the world over, is the “McDonald’s” name on every restaurant.
In another world-first for Australia, from 8 January 2013 until early February, 13 McDonald’s restaurants around Australia are sporting signage on which the name “McDonald’s” is replaced with “Macca’s”, in honour of Australia Day. While McDonald’s Australia has never denied its nickname –its advertisements have sometimes referred to its restaurants as “Macca’s” – it has never before gone so far in recognising the market penetration of its unofficial moniker as to rebrand any of its locations.
From a marketing perspective, this is no doubt a shrewd move by McDonald’s Australia. It is recognising, validating and embracing the Australian love of a good diminutive nickname. If your surname is Ferguson, you are probably “Fergie” to your mates. The barbecue is a “barbie”. A swimming costume is a “cozzie”, and the mosquito that might bite you while wearing one is a “mozzie”. You drink beer from a “tinnie” (if it is in a can), or a “stubbie” (if a bottle). Sharon is “Shazza”, Gareth is “Gazza”, Darryl and Darren are both “Dazza”. Of course we are all “Aussies”. And anybody with a surname beginning with “Mac” or “Mc” is probably “Macca”. It is a sign of affection and acceptance. There is nothing more Aussie than to wear your nickname with pride.
But the temporary Macca’s rebranding also raises some interesting trademark issues. Although McDonald’s has never before “officially” rebranded its restaurants, it has had an Australian trademark registration for MACCA’S since 1994. An application for the trademark IT ALL COMES TOGETHER AT MACCA’S was filed in December 2011, and registered in August 2012. And an application for TRACK MY MACCA’S was filed in October 2012, and is currently pending (in case you are wondering, it is an iPhone app for an ingredient tracker that gives you “the lowdown on some of your Macca’s favourites”). So, in a trademark sense, at least, McDonald’s “owns” the name MACCA’S, despite the fact that the nickname was not invented by McDonald’s, but coined and popularised by the Australian public.
In contrast to a patent claim, there is no requirement for a trademark to be “novel” or “nonobvious”. A trademark must generally be distinctive, rather than descriptive, but it does not have to be invented by the user. Many of the world’s most famous trademarks are pre-existing words or other signs. “Nike” was the ancient Greek winged goddess of victory. “Starbuck” was a name long before it was a chain of coffee houses, notably the first mate of the ship Pequod in Moby-Dick. “Coca-Cola” is a combination of the coca (leaf) and cola (bean) which were, presumably, ingredients in the original formula. “Apple” is simply the name of a common fruit, and its logo an easily-recognised image of said fruit.
Nonetheless, you might think that there must be a difference between plucking an existing word from the lexicon for repurposing as a trademark, and taking ownership of a word that others have adopted as an alternative descriptor for a business? Can McDonald’s really take ownership of a word devised by the people of Australia?
The answer to these questions lies in the nature of the right granted by registration of a trademark. As defined in section 17 of the Australian Trade Marks Act 1995:
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.
So registration of a trademark does not give the owner the right to prevent people from using a word in their everyday conversation or other communications. Section 120(1) of the Act defines the most basic principle of trademark infringement:
A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.
Registration of the word MACCA’S by McDonald’s does not allow the company to prevent a person from using the word for a range of ordinary purposes. The trademark is registered in respect of restaurant services and the like, in class 42 of the international trademark classification system, and this is the starting point for assessing whether any use of the word by someone other than McDonald’s is an infringement. Using the word “Macca” to refer to an acquaintance of Scottish ancestry, for example, is not something that McDonald’s is granted any power to restrain. Members of the general public may use the word “Macca” for their own purposes every day. But unless they are using it in the course of trade, to identify their own goods or services, and in a way that may cause confusion with McDonald’s business, they are not infringing McDonald’s rights.
However, it is one thing to register a trademark, and another altogether to use it as a trademark, i.e. as a distinguishing sign in the course of trade. In the United States, for example, trademark owners are required periodically to make a Declaration of Continued Use in order to maintain a registration. It is case of “use it, or lose it” – non-use without an adequate excuse will result in a trademark being expunged from the Register. Conversely, so long as a trademark is used there is no set limit on how long it may remain registered and protected. The Samson Rope company claims ownership of the US trademark having the longest continuous period of registration and use: its logo depicting the biblical character Samson slaying a lion was first registered in 1884, and is still in use today.
In Australia, too, a trademark must be used in order to remain validly registered. However, no periodic showing of use is required. Instead, a “market-based” system is used, whereby any person who believes that a registered trademark has not been in used for a continuous period of three years may file an application for removal of the trademark from the register. This system requires no administration on the part of the trademark owner, or the Trade Marks Office, until somebody challenges the registration. So long as the trademark has been used by the owner during the relevant period, defending a non-use removal action is generally straightforward. Evidence of a single use, such as an invoice, or an advertisement making a genuine offer for sale, is typically sufficient to defeat a removal application.
Which brings us back to McDonald’s Australia Day promotion. In addition to being good marketing, it also serves an important function from the perspective of the MACCA’S registered trademark. It does not matter how large a proportion of the Australian population refers to McDonald’s as “Macca’s”, none of this constitutes use of the trademark, by McDonald’s, in the course of trade. For McDonald’s to ensure that it can defend its registration against a non-use removal application, it must ensure that, at least once every three years, it actually makes use of the word MACCA’S to identify its own restaurant services to the public. Rebranding just a handful of restaurants around the country, even if it is only for a few weeks, is more than sufficient to satisfy the “use” requirement.
In short, McDonald’s temporary rebranding of a few restaurants with MACCA’S signage is not only a bit of fun, and good for the company’s image as a genuine participant in the Australian community, it is also an important element in managing and maintaining its valuable trademarks. Other brand owners could do a lot worse than looking to McDonald’s strategies for ideas and inspiration