Café Roubaix to keep name after Specialized back down

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.