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Café Roubaix could keep name after Fuji owner wades into Specialized row

ASI, which licences Roubaix trademark to Specialized in US, says it had no right to register name in Canada

The owner of the Café Roubaix bike shop in Alberta, Canada may be allowed to keep the name after Advanced Sports International (ASI), owner of the Fuji bikes brand and which licences the ‘Roubaix’ name to Specialized in the United States, stepped in to say it would be happy for him to use it. ASI’s CEO also says that Specialized had no right to register the name in Canada.

News that Specialized, which has registered ‘Roubaix’ as a trademark in Canada, was threatening the shop owner Dan Richter, who also sells carbon wheels under his Café Roubaix brand, with legal action, prompted accusations of bullying against the California-based bicycle manufacturer on social media at the weekend.

But Pat Cunnane, ASI’s CEO, has told the American trade publication Bicycle Retailer that Specialized did not have the power under the licensing agreement with ASI to register the ‘Roubaix’ name in Canada and that his company was happy for Richter to use it.

Cunnane said: “We have reached out to Mr. Richter to inform him that he can continue to use the name, and we will need to license his use, which we imagine can be done easily.

He added that his company has been trying to contact both Richter and Specialized, so far without response.

“We are in the process of notifying Specialized that they did not have the authority, as part of our license agreement, to stop Daniel Richter... from using the Roubaix name,” he added.

“While ASI does have the authority to object to Mr. Richter’s use of the name and while we at ASI understand the importance of protecting our bicycle model names, we believe that Mr. Richter did not intend for consumers to confuse his brick-and-mortar establishment or his wheel line with our Roubaix road bike.

“And we believe consumers are capable of distinguishing his bike shop and wheel line from our established bikes.”

Specialized registered the ‘Roubaix’ name in Canada in 2007 for “Bicycles, bicycle frames, and bicycle components, namely bicycle handlebars, bicycle front fork, and bicycle tires.”

Larry Koury, Specialized Canada’s managing director, told the Calgary Herald at the weekend that "A simple trademark search [by Richter] would have prevented this,” adding, “We are required to defend or lose our trademark registration"

However, ASI’s Cunnane pointed out that while Fuji, which has a Roubaix model in its range, had never registered the trademark in Canada, it had been using it there since before Specialized licensed the name from ASI in the United States in 2007.

“Like many trademark owners, ASI does not register its trademarks in every country and never tried to register the mark in Canada,” he explained.

“ASI only recently learned of Specialized’s registration of the Roubaix trademark in Canada and ASI’s position is that Specialized’s registration of the mark in Canada was inappropriate under the terms of their license agreement.

“ASI has used the mark in Canada for well over 10 years, giving it first-use trademark rights in Canada.”

Cunnane also said that ASI has in the past drawn up agreements with other parties regarding trademarks, giving the example of Gran Fondo, which it uses in the United States, while under a co-existence agreement, BMC uses the trademark in Europe.

Richter, who served with the Canadian armed forces in Afghanistan, opened his high-end bike shop in Cochrane, Alberta in March this year.

He used his life savings, military severance pay and money he was awarded due to post-traumatic stress syndrome (PTSD) to fund the opening of the shop, which deals in high-end bikes, and says that getting the business up and running has helped him cope with his PTSD.

But even though he believes he has a strong case against Specialized, with his lawyer estimating legal costs of in excess of C$150,000 to fight the American company’s claim, it looked as though he might be forced to acquiesce to its demands and change the shop’s name.

ASI’s intervention means that Richter may not now have to do that, and far from having to come up with a new brand and rebuild it from scratch, the publicity he has gained is unlikely to have harmed his fledgling business.

The Calgary Herald said yesterday that while it had not yet been able to speak to Richter about ASI's intervention, he had been touched by the support he received, including people from around the world ordering products from his website - he's currently getting more Café Roubaix t-shirts printed after running out of stock.

"This is encouraging and exciting, and I’m finding it very humbling as well,” he said. “I’m really amazed by the level of support. It’s overwhelming.”

“We were ready to roll over. Maybe now we can come to an agreement,” he added. “We’ve always been willing to compromise.”

While Specialized has yet to formally respond, it’s fair to say the company is not coming out of the episode well.

Many users of Facebook and Twitter have said they will never buy one of its products again as a result of its threat of legal action against Richter and are calling on others to boycott the brand.

Nor is the fact that it is ASI that has put forward a solution to allow Richter to keep using the Café Roubaix name likely to reflect well on Specialized; irrespective of Cunnane’s assertion that it went beyond its powers in registering the trademark in Canada, the company had its own opportunity to back down that it has now missed.

While social media has played a crucial role in bringing the case to international attention, even before the days of Twitter and Facebook similar stories of brands taking what was perceived as heavy handed tactics to protect their trademarks have at times gained global media attention.

In 1986, the small New Zealand town of Otorohanga changed its name for a time to Harrodsville after then owner of the Harrods department store Mohamed Al-Fayed sought to take legal action against restaurant owner Henry Harrod, who had named his restaurant after himself.

Other businesses in the town also changed their names to Harrods, and the scorn heaped on Al-Fayed in the media in Britain and elsewhere led to him backing down.

Simon joined road.cc as news editor in 2009 and is now the site’s community editor, acting as a link between the team producing the content and our readers. A law and languages graduate, published translator and former retail analyst, he has reported on issues as diverse as cycling-related court cases, anti-doping investigations, the latest developments in the bike industry and the sport’s biggest races. Now back in London full-time after 15 years living in Oxford and Cambridge, he loves cycling along the Thames but misses having his former riding buddy, Elodie the miniature schnauzer, in the basket in front of him.

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53 comments

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badback | 10 years ago
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allez neg | 10 years ago
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I'm going to start up an online auction site specialising (!) in selling kangaroos.

But what to call it?

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Guyz2010 | 10 years ago
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Isn't that a song name 'roubaix roubaix roubaix'

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CJSTEVENS1955 | 10 years ago
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STILL NOT BUYING SWORKS...STILL NOT BUYING SWORKS...BULLIES...DICKS!

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WDG | 10 years ago
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As stated, Specialized are dicks when it comes to trademarks, but aren't averse to borrowing names they have no right to use (http://forums.mtbr.com/vintage-retro-classic/specialized-repack-tires-14...). It just creates bad feeling in the whole cycling community towards them, and means they are wasting money on advertising.

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allez neg | 10 years ago
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How about them Bromptons then?

Forgive the clumsiness of my public adresses, I'm not much good at oratory.

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Argos74 | 10 years ago
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Does make me worry for the future of Specialized Cakes, an independent purveyor of very fine bespoke cakes.

Ladies, gentleman, to the ramparts! They may take our lives, but they'll never take our cake!

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Simon_MacMichael replied to Argos74 | 10 years ago
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That's only two letters away from Specialized bikes. Just saying  3

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yourpaceormine | 10 years ago
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Whilst I understand the need to protect intellectual property I am struggling with this, how can Roubaix be a trade mark? It is a place. If it belongs to anyone it belongs to the inhabitants of Roubaix. Trade mark Paris-Roubaix yes, as that is the name of a race which belongs to it's organiser.
it reminds me of the US drug firm that has a trademark on 'adrenaline' so the drug for anaphylaxis has to be called 'epinephrine' not adrenaline. (Surely if any being owns the trademark rights to adrenaline it is The Creator?)

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dp24 replied to yourpaceormine | 10 years ago
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yourpaceormine wrote:

Whilst I understand the need to protect intellectual property I am struggling with this, how can Roubaix be a trade mark? It is a place. If it belongs to anyone it belongs to the inhabitants of Roubaix.

It's not about trademarking the place name, it's about trademarking that name in the context of bicycle frames/components.

I suspect the issue all along was more about the rims this guy was selling than the cafe itself, but Specialized have made a right balls-up of the situation.

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Leviathan | 10 years ago
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baggies2354 | 10 years ago
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Odd that the Americans chose not to sign the agreement to only call Champagne, Champagne if it was made in the Champagne region and by the Champagne process using only the three grape varieties allowed and they call their sparkling white wine Champagne even though it's not but can kick up a fuss over Roubaix.  7

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sq225917 | 10 years ago
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This whole thing reminds me of the heavy handed way in which 'Monster cable' works in the audio industry- or at least did until they ran into a retired litigator who now owns his own small audio cable manufacturing business.

http://www.bluejeanscable.com/legal/mcp/

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DAG on a bike | 10 years ago
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I'm sat here, looking at my Specialized S-Works Roubaix frame...even Specialized aren't exactly shouting 'Roubaix'.

The word Specialized appears 6 times on the frame, S-Works twice and roubaix twice - on the inside of the chain stays (note lower case r!)

Is it really that big a deal? After all, Café Roubaix isn't exactly a bike, which is what people may associate with the Specialized Roubaix.

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velotech_cycling | 10 years ago
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Simon_MacMichael wrote:

Parma ham, Champagne, Melton Mowbray pork pies etc

These are actually a totally different barrel of fish, so to speak ...

These names are subject to EU Protected Food Name Status that has some very specific provisions - so Champagne has to be made in the Champagne region, it has to be made using the same processes and so far as is practicable, the same ingedients (in this case the grapes themselves vary from year to year, although the varieties grown don't) as it was at the point of regsitration, and so on.

None of this applies in the case of Specialized or Fuji.

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jellysticks | 10 years ago
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Dammit too late, sorry

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badback | 10 years ago
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Err. It's in France.  40

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jarredscycling | 10 years ago
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What a PR nightmare for absolutely no business gain

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badback replied to jarredscycling | 10 years ago
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jarredscycling wrote:

What a PR nightmare for absolutely no business gain

Except for Cafe Roubaix who I believe have been doing a roaring trade in T-shirts with their logo on.

Fuji also seem to have gained a few kudos points. Does anyone know if Specialized USA have issued any statements yet or is their PR/Social Media person still in hiding ?

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pants | 10 years ago
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There should be a mass boycott of Specialized products.

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allez neg replied to pants | 10 years ago
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pants wrote:

There should be a mass boycott of Specialized products.

Awesome idea. I've not ridden my nice shiny Allez since September not 'cos it's getting chilly and I can't be arsed to get up and go out at 7.30 on weekend mornings with my local peloton, preferring to stay in a warm bed and hopefully get my leg over (TMI?), it's due to a principled stand against big business. Honest.

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chadders | 10 years ago
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Glad its all been settled think the spring classic would lose it mystique if it had to change its name to the Paris - to a place just south of Calais!!

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crazy-legs | 10 years ago
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Quote:

I find it un-believeable that Specialized was granted a trademark based on a placename.

Why? Trek have a trademark on "Alpe d'Huez".
As mentioned above, there are hundreds of trademarks based on place names.

Doesn't mean no-one else can use it, it simply means that IN THAT CONTEXT (bike branding), you can't use it unless you have a licence from the company that owns it.

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jimc101 | 10 years ago
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At the end of it, everyone got some PR, for the cafe, I've not got a lot of sympathy, as they failed in doing due diligence with their name, not so much for the cafe, but more so for the wheels.

Specialized had to do what they did, even though they are the brand everyone seems to like to hate.

The bigger thing really is, should you be able to trademark a place name like they (ASI/Specialized) did?

Will keep on wearing my Specialized BG shoes, as they are the best fitting ones for me I have found yet.

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farrell replied to jimc101 | 10 years ago
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jimc101 wrote:

Specialized had to do what they did, even though they are the brand everyone seems to like to hate.

No, no they didn't. They really didn't.

It was a dickish move by Specialized on the back of several other dickish unnecessary moves.

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Simmo72 replied to jimc101 | 10 years ago
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jimc101 wrote:

Will keep on wearing my Specialized BG shoes, as they are the best fitting ones for me I have found yet.

Agree. They may be behaving like soul sucking corporate scum but they make good shoes and I'm not likely to chuck them in the bin or give my Romin saddles away to charity.....though I will take more effort to look elsewhere on my next purchase.

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Simmo72 | 10 years ago
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Is it true there is no such thing as bad PR? Specialized have got everyone talking about their name and the brand of their bike. Consumers have short term memories, yet the brand name is lodged in your brain somewhere. Wonder if they will still come out on top with their xmas sales?

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Leviathan | 10 years ago
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Who are ASI and how do they own the name of a French City?
Ridicule!*

*en francais

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badback replied to Leviathan | 10 years ago
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bikeboy76 wrote:

Who are ASI and how do they own the name of a French City?
Ridicule!*

*en francais

Welcome to the wonderful world of trade marks and intellectual property.

You ought to see the registration for where I live Chesterfield: http://www.ipo.gov.uk/tmcase/Results/4/EU000064048

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Karbon Kev | 10 years ago
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wonderful development, developing nicely it seems ...

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