Home
Bike shop owner Dan Richter says three-way agreement to be drawn up with US brand as well as Fuji owner, ASI

Dan Richter, the owner of the Café Roubaix bike shop in Alberta, Canada at the centre of a trademark dispute with California-based bicycle manufacturer Specialized, has confirmed that the company’s founder, Mike Sinyard has phoned him to agree that he can use the name.

Alberta newspaper the Calgary Herald broke the news that the dispute had been resolved yesterday evening. Richter told it that the threat of legal action, which hit world headlines at the weekend but has in fact been ongoing for several months since he opened his shop in March, had left him “exhausted.”

Richter, who suffers from post-traumatic stress disorder (PTSD) after a tour of duty with the Canadian armed forces in Afghanistan – he maintains setting up the business based in Cochrane near Calgary has helped in his recovery – said: “It was a good conversation. We are going to move forward with an agreement.”

At the start of the weekend, however, Richter had resigned himself to having to change the name of his shop, which he also uses on carbon wheels he sells, after his lawyer told him that while he believed he had a strong case, fighting Specialized’s claim would cost at least C$170,000.

That was money he didn’t have, with his life savings, army severance pay and an award for PTSD all tied up in his business. But once the story went viral on social media, with Specialized widely condemned for what was seen as its bullying tactics, events have taken a happier turn for him.

Specialized, which since 2007 has licensed the Roubaix trademark in the United States from another American company, ASI, owner of the Fuji brand among others, had itself registered the word as a trademark in Canada the same year. It insisted that a simple trademark search would have told Richter that.

Throughout the weekend, even as it was being attacked on Facebook and Twitter with calls for a boycott of its products and many vowing not to buy any of the brand’s products again, Specialized stayed silent on the issue.

On Monday, its position seemed to be weakened when ASI chipped in on the row. Its CEO, Pat Cunnane, insisted that Specialized had not had the power to register the trademark in Canada and said at the time it did, Fuji was already selling a Roubaix-branded bike there – giving it first-use rights to the trademark.

That’s something of a moot point in the issue surrounding Café Roubaix, however; as things stand, Specialized is the legal owner of the Roubaix trademark in Canada.

Cunnane tried to contact Richter to help resolve the dispute. But before the bike shop owner could get back to him, he heard from Sinyard, whom Tom Babin of the Calgary Herald said “was full of apologies and agreeable to a deal in which all three companies could continue to use the word.”

As has been widely pointed out in recent days, Specialized has a track record in pursuing legal action against parties it believes have infringed its intellectual property rights, and Bobin asked Richter whether he believed their about-turn was sincere, or whether they were reacting to the outcry on social media.

“I tend to be a very leery dude,” replied Richter, but [Sinyard] was very contrite. Very genuine. I’m not sure [Sinyard] even knew this was going on until the rest of the world did,” he added. “We had a good talk.”

The legal aspect of the agreement still needs to be finalised before Richter can get back to running his shop – including fulfilling orders from a now global client base. Café Roubaix-branded t-shirts have already sold out, with more on order.

“It’s been crazy, but I’m really thankful,” he concluded. “We’re still in business. That’s the important part.”

Specialized meanwhile will be left to reflect on what harm may have been done to its brand by an episode that epitomises the pitfalls facing companies in an age in which negative stories, even those originating as this did in the local press, can quickly reach millions of people around the world – who moreover now have channels to share their opinions with others.

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.

14 comments

Avatar
parksey [342 posts] 4 years ago
0 likes

Good to see common sense prevail!

Avatar
bradtipp [12 posts] 4 years ago
0 likes

Nice, and exactly as I had noted. Specialized, like any big company outsources legal enforcement of Trademarks to specialists. There is no way they could justify doing that in house. Most of the time that is fine. 1 in 1000 times it all goes wrong, and as here the company has to step in and fix it. The point is that the system works and here, with the aid of the press/social media it worked perfectly. Specialized will be vilified by some people, but to some extent they can't win and some people are too quick to judge and always assume the worst.

If you start by assuming the best then you will be happier and les stressed in everything you do. You'll also be pleasantly surprised how nice most people are. I only wish I could live by my advice  1

Avatar
Simon E [3207 posts] 4 years ago
0 likes
bradtipp wrote:

Nice, and exactly as I had noted. Specialized, like any big company outsources legal enforcement of Trademarks to specialists. There is no way they could justify doing that in house. Most of the time that is fine. 1 in 1000 times it all goes wrong, and as here the company has to step in and fix it.

1 in 1000... Really? Seeing their history of hassling small businesses and ex-employees that is one hell of a lot of threatening letters! A more intelligently implemented policy would mean this PR disaster would never have happened.

bradtipp wrote:

If you start by assuming the best then you will be happier and les stressed in everything you do. You'll also be pleasantly surprised how nice most people are. I only wish I could live by my advice  1

I try to do this. On the whole most people are generally good. However, it seems that the bigger the company the greater the chance of it being run by blinkered fools who think they can get away with all kinds of nastiness when money matters more than anything else and they stop treating other people as fellow human beings.

Avatar
zedbedboy [31 posts] 4 years ago
0 likes

I don't have any sympathy at all for the 'Big S'. They have a long and checkered history of this sort of behaviour. There are so many other ways to approach this problem. They opted to use the big stick approach and the stick doesn't even belong to them.

Someone at Spesh signed off on the lawyers actions. It's worked for them before so they thought they could get away with it again.

See these other links for the whole 9 yards....

http://bikeportland.org/2011/03/10/epic-wheel-works-will-change-name-due...

http://bikeportland.org/2006/01/31/specialized-mountain-cycle-disagree-o...

And this for an interesting opinion piece from a former lawyer....

http://redkiteprayer.com/2013/12/the-explainer-because-i-ing-hate-bullies/

You reap what you sow!

Avatar
allez neg [496 posts] 4 years ago
0 likes

It'd be nice to see a fat donation of cash and bikes etc from SBC to any Canadian version of H4H perhaps.

Anything to get some positive PR for them.

Avatar
a.jumper [850 posts] 4 years ago
0 likes

Yeah but now we know their history of this stuff and they've still not punished their Melbourne dealer for the naked body paint girls. Maybe I won't totally boycott them but they're well down my preferences now.

Avatar
sm [406 posts] 4 years ago
0 likes

PR? Meet Disaster. Like steeling candy from a baby and then attempting to hand it back when you hear the gasps from onlookers.

Avatar
caaad10 [189 posts] 4 years ago
0 likes

A clear case of damage limitation, but it's too late for me...

Avatar
Simon E [3207 posts] 4 years ago
0 likes

Over at CN Mike Sinyard is trying hard to convince us his motives are good, he's only really doing it to protect us from fake products!

http://www.cyclingnews.com/news/sinyard-takes-responsibility-and-apologi...

Pull the other one Mike, it's got bells on.

Avatar
farrell [1946 posts] 4 years ago
0 likes
Simon E wrote:

Over at CN Mike Sinyard is trying hard to convince us his motives are good, he's only really doing it to protect us from fake products!

http://www.cyclingnews.com/news/sinyard-takes-responsibility-and-apologi...

Pull the other one Mike, it's got bells on.

Exactly.

"Hey Guys! I'm just one of you! I wasn't listening to no marketing team or lawyers types, I was out riding on rad trails, all weekend, just like you wish you could! I'm awesome, I'm just like you!"

Piss off Sinyard, you disappeared as company and tried to backdoor it and after several days thinking and planning this is the very best you could come up with?

Avatar
farrell [1946 posts] 4 years ago
0 likes

It also appears that they have also launched a similar suit against clothing company Epix because they think it infringes on their Epic range.

No confirmation as yet, other than Epix facebook page.

Avatar
Simmo72 [678 posts] 4 years ago
0 likes

Would they have stepped in without the public backlash? Me thinks nay.

Basically they saw the public anger and crapped it.

The banks are getting away every day with their bully boy tactics on the small business, so can we direct some venom at them now, or maybe at MP's and their 9% pay rise.

Avatar
jason.timothy.jones [293 posts] 4 years ago
0 likes

Well I guess this will go some way to limit the damage, Im still pissed about it all, but you do have to give credit where its due

https://www.facebook.com/photo.php?v=429367720519294&set=vb.219609484828...

Avatar
dwbeever [57 posts] 4 years ago
0 likes

Mike Sinyard did the only thing he could given the circumstances he found himself in. However, said circumstances were of his own making.

I always wait to hear both sides of a story. Now I have, the one thing that really jars for me is that the letter Richter received was from Specialized (see velominati article) and not some third party legal firm as Sinyard would have you believe.

I have no doubt that Sinyards story about protecting from fakes is very true, but the overlap with this case is tenuous indeed. It just looks to me like it was the only hand he had to play given the enormous (and well deserved) backlash....