Canadian trademark row explodes on social media

by Marc Basiliere 20

Specialized takes Cafe Roubaix to task over name

Can "quaint" apply to Western style?
Can “quaint” apply to Western style?

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.

In the draft of giants
In the draft of giants

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.

No connection
No connection with the bicycle of the same name

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.

caferoubaix.ca

twitter.com/CafRoubaix

 

Comments (20)

  1. Specialized should sue Roubaix’s mayor, his city using a patented name 🙂

  2. Er, change the shop name! What’s the issue? There are a million bike related words he could use! Or non-bike related!

  3. Actually been to Cochrane for a coffee back in 2011 when riding between Calgary and Banff.

    Specialized have previous on this with Epic Designs (now Revelate) and I decided not to avoid buying there bikes etc from those days. I had Epic Designs bags and A Specialized Epic bike at the time and never even considered the similar names until the case. Eric, like Cafe Roubaix, could not afford to fight.

  4. Or specialized can try to take some good publicity out of this, and grant the cafe a license for a nominal sum. They’re right in saying they have to show they’re enforcing their trademarks, but there’s plenty of options out there that don’t make them look like an aggressive company with a penchant for legal action.

  5. I don’t understand – Specialized have trademarked ‘Roubaix’ but surely the wheels are branded under a different name – ‘Café Roubaix’ so where’s the problem?

    If it is an issue wouldn’t just adding a hyphen into the name solve it, turning it into ‘Café-Roubaix’.

  6. Trademark laws vary massively around the world, but in Canada (and indeed the US and Europe) it’s enough to use part of a trademarked phrase, or even just something very similar to it (e.g. if I sold burgers from my Macdonald’s fast food joint I could expect legal involvement sharpish)

  7. Hey Specialized, have you ever asked yourself …. What would Ned do!

  8. Its a bit of an arrogant stance by the big ‘S’ to think that true cyclists instantly associate the word Roubaix with a bike in their range and not the town where one of THE european classic races takes place. Bad attitude by a big company who should be building links with LBS internationally and not going in all guns blazing.

  9. This is why I don’t buy Specialized. They’re just too bully-boy to smaller businesses. Yes I agree they need to protect their intellectual property but they just take it way too far.

    I bet they’re really concerned about my stand though.

  10. They tried to sue Volagi bikes too, albeit on design rather than trademark infringement. IIRC Volagi had to pay 1 cent.

    But yeah, change the name, and make a HUGE shout about doing so, get as much marketing as possible from it, and sell as many non-Specialized bikes as possible. Preferably Volagi

  11. Make a huge shout? Don’t you think the publicity has been good enough already? It’s not like the little shop will lose custom after a name change (The Victim Cafe?)!

  12. Just decided right now to never buy a specialized again.

  13. Not sure what the hate against Specialized is about. Just to be clear, if they fail to act on this, they will lose the trademark. Which then means that anyone can just open up a “Specialized Bicycles” in Canada and be done with it. There could be 50 of them, selling china copies of Specialized frames. That would damage the brand.

    They have an obligation to sue this company, else it could be very damaging for them…

  14. faz, you’ve just bought into Spesh’s PR. You’re incorrect. They do have to protect their trademark. They don’t necessarily have to do it in this instance and they definitely don’t have to do it in this way.

  15. Fuji Bikes also make a ‘Roubaix’ model. I’ve read that they had it before Specialized, and Fuji allowed them to use the name in exchange for sharing their full-sus mtb technology.
    Don’t know how true it is, but it’s a little ironic.
    I don’t see why a coffee shop’s name would concern Specialized – I think it’s ridiculous, but I think the shop owner should have thought twice about producing wheels under the name…

  16. I suspect that it’s Specialized (USA) who have instructed Specialized (Canada) to take action. The yanks do seem to love their futile litigation claims.
    Feel a bit sorry for the guys at Specialized (UK) though. They’ll get fall out from this shit, and they’ve done nothing wrong.

  17. Anyhow, it seems that all is well now, as the shop owner has had a nice chinwag with Mike Sinyard, and everything is peaceful again. http://www.bicycleretailer.com/north-america/2013/12/10/cafe-roubaix-owner-says-sinyard-called-all-fine#.Uqeo3nggGc0

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