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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.

Born in Scotland, Simon moved to London aged seven and now lives in the Oxfordshire Cotswolds with his miniature schnauzer, Elodie. He fell in love with cycling one Saturday morning in 1994 while living in Italy when Milan-San Remo went past his front door. A daily cycle commuter in London back before riding to work started to boom, he's been news editor at road.cc since 2009. Handily for work, he speaks French and Italian. He doesn't get to ride his Colnago as often as he'd like, and freely admits he's much more adept at cooking than fettling with bikes.

53 comments

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jmaccelari [252 posts] 3 years ago
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Good on Fuji - and even more brand damage to Specialized. They really seem to be trying to paint themselves in as bad a light as possible. I for one will be avoiding their brand in future.

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boardmanrider [95 posts] 3 years ago
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I find it un-believeable that Specialized was granted a trademark based on a placename. Then again, this strikes me as being a fairly typical arrogant approach by an American company. How they can appropriate a place not in their own country as their own is remarkable.

I would be very curious as to what the Belgian government or the Mayor of Roubaix says about this. Surely it should be the other way around? Plus what about 'Roubaix' fabric?

What this has done for me is that I'll never, ever buy a Specialized product. I'll go home on with puncture if the only inner available to me is made by Specialized.

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Alb [152 posts] 3 years ago
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Well played Fuji/ASI, well played  41 Specilaized PR team lots to learn from this episode methinks.

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thebungle [104 posts] 3 years ago
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boardmanrider wrote:

I would be very curious as to what the Belgian government or the Mayor of Roubaix says about this. Surely it should be the other way around? Plus what about 'Roubaix' fabric?

Why would the Belgian goverment be concerned?

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dbb [34 posts] 3 years ago
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seems like common sense - how did that happen?

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bici1977 [42 posts] 3 years ago
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How did Qui-Gon Jinn say? There is always a bigger fish.....

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Simon_MacMichael [2494 posts] 3 years ago
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boardmanrider wrote:

I find it un-believeable that Specialized was granted a trademark based on a placename. Then again, this strikes me as being a fairly typical arrogant approach by an American company. How they can appropriate a place not in their own country as their own is remarkable.

Why is it 'American' arrogance? Companies all over the world, in all industries, use place names as trademarks and brand names, and unless it's a product that has protected name origin - Parma ham, Champagne, Melton Mowbray pork pies etc - it's fair game and perfectly legal.

The issues here, I think are two-fold. One, that Specialized were way too heavy-handed and could simply have found a way to let Mr Richter use the Roubaix name. No-one was ever going to confuse the two, and no-one outside Alberta would ever have heard of Café Roubaix.

Secondly, we already knew that they used the name in the US under licence, but now ASI are saying they don't believe Specialized had the right to trademark it in Canada - and I'm wondering if they may have shot themselves in the foot there if, say, that gave ASI grounds to terminate the US licence.

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cub [86 posts] 3 years ago
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boardmanrider wrote:

I'll go home on with puncture if the only inner available to me is made by Specialized.

Lets not get carried away here.

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caaad10 [188 posts] 3 years ago
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I'm going to build a bicycle and call it "New York" or similar, then register the name in europe.....

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velobetty [71 posts] 3 years ago
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Simon_MacMichael wrote:

Parma ham, Champagne, Melton Mowbray pork pies etc

I feel sorry for the owners of the café in Roubaix. Nobody cares about them, do they?  3

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allez neg [496 posts] 3 years ago
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Down with this sort of thing

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surly_by_name [524 posts] 3 years ago
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Here's how trade marks (and patents) work. In the old days, the registrar of trade marks (or the patent office) would examine your application in detail including existing marks, names, etc (or the prior art) and then grant or decline to grant trade mark (or patent). That detailed review function cost money that governments decided could be saved by effectively outsourcing the role of scrutinising a mark (or a patent) to private litigants. (In any trade mark or patent case, the respondent will almost inevitably counter claim for invalidity.) So now applications for trade marks (and patents) are given only cursory scrutiny, then advertised in the government gazette and then granted, the theory being that if someone has a problem with the mark (or patent) then they will challenge it. This kind of works but tends to favour the deep pocketed over the small. Specialized's statement that they needed to act to defend their mark - or the mark that they believed they had the right to use in the relevant territory - ("protect it or lose it") is probably correct and I have some sympathy with their legal position but as a PR exercise they've cocked this up mightily.

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mooleur [537 posts] 3 years ago
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allez neg wrote:

Down with this sort of thing

Careful now!

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lukea-d [58 posts] 3 years ago
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and to the right of this forum - an ad from Hargroves Cycles reading "Specialized sale now on"! I can't see that leading to too many clicks.

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deblemund [263 posts] 3 years ago
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I still love my Roubaix but I'm glad it's in the garage til the spring. I'd be embarrassed to be seen on it at the moment.

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mr-andrew [300 posts] 3 years ago
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It seems as if this is becoming something of a habit for Specialized. Anyone remember the court case against Volagi in which they won $1 in damages? That garnered a fair amount of bad press, but nothing on this level. It seems as if their heavy handed legal department isn't doing them any favours at the moment.

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Karbon Kev [688 posts] 3 years ago
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wonderful development, developing nicely it seems ...

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Leviathan [2662 posts] 3 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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Simmo72 [648 posts] 3 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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jimc101 [76 posts] 3 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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badback [302 posts] 3 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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crazy-legs [881 posts] 3 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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farrell [1946 posts] 3 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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badback [302 posts] 3 years ago
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caaad10 wrote:

I'm going to build a bicycle and call it "New York" or similar, then register the name in europe.....

Or even better Morgan Hill.

PS There's a Roubaix in South Dakota: https://maps.google.co.uk/maps?oe=utf-8&client=firefox-a&channel=fflb&q=...

Tickles me that Spesh nicked their current slogan 'I am Specialized' from Spartacus (and Nike). As everyone know's Spartacus rides a Trek.

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Fran The Man [82 posts] 3 years ago
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"Embarrassed", deblemund? My Roubaix's in the cupboard under the stairs right now, but I can't wait to get it out again and ride it with pride! Well done to ASI for stepping in and sorting out this silly business before the Canadian vet suffers from more PTSD – Post Traumatic Specialized Disorder!

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chadders [91 posts] 3 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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pants [238 posts] 3 years ago
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There should be a mass boycott of Specialized products.

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jarredscycling [456 posts] 3 years ago
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What a PR nightmare for absolutely no business gain

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badback [302 posts] 3 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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allez neg [496 posts] 3 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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