by Marc Basiliere
December 9, 2013
Specialized takes Cafe Roubaix to task over name
Sitting at the Eastern edge of the Canadian Rockies just Northwest of Calgary, Alberta, Cafe Roubaix Bicycle Studio is a small shop like countless others around the world. Located above an ice cream shop on the Western-inspired main street in Cochrane (motto: Where the West is Now), the bike shop opened last march following founder Dan Richter’s retirement from the Canadian armed forces. A road-focused shop, the Cafe Roubaix name, website, and shop photos reflect what is a clear passion on the part of its owner for the romance of the road- classic races and racers in particular.
Following a provocatively-titled Saturday post on the local Calgary Herald blog, the shop finds itself at the centre of an exploding social media storm. It turns out that, a couple of months back, Cafe Roubaix Bicycle Studio received a letter from Specialized Bicycle Components, demanding that the shop stop using the Roubaix name or face legal action. In addition to being the name of a city in Northern France and the destination of the legendary Hell of the North race – Paris-Roubaix – Roubaix is also the trademarked name for a model of Specialized road bike.
A quick online trademark search does indeed indicate that Specialized has trademark protection for their use of the term Roubaix when applied to “Bicycles, bicycle frames, and bicycle components, namely bicycle handlebars, bicycle front fork, and bicycle tires.” A bike shop might reasonably expect – as Richter apparently did – that Specialized’s trademark protection would not interfere with the naming of his shop. But, as always, there’s a twist: Richter has been selling hand-built wheels under the Cafe Roubaix name since before the Bicycle Studio’s opening.
It may be that the wheel branding, more than the shop name, may be causing Specialized the most irritation. Still, internet reaction makes it clear that it’s hard not to feel bad about the Cafe Roubaix has been quoted over $150,000 to fight the threatened lawsuit- a cost that the shop is unprepared to bear. For Specialized’s part, their Canadian subsidiary is quoted in the Calgary Herald piece as saying that they are in effect forced to take action by the structure of that country’s trademark laws: any company that does not actively police their trademarks may, over time, see the protection that they afford eroded.
The use of place names for products is far from a new one. Santa Cruz would likely be bothered if “Santa Cruz Workshop” popped up selling a line of bars and stems, and Hyundai would be miffed if Volkswagen announced a forthcoming 2015 “Santa Fe Spirit” SUV. Even if both place names came well before their respective product categories even existed, those names are protected in that context. From the looks of things, we’re all going to get a passionately-argued lesson in Canadian trademark law.