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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.