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Specialized Roubaix trademark legal threat may backfire as Fuji weighs in

By:
BikeRadar
Published:
December 10, 2013, 11:40,
Updated:
December 10, 2013, 11:44
Edition:
First Edition Cycling News, Tuesday, December 10, 2013
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The all-new Specialized Roubaix SL3

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Owner of Fuji brand claims worldwide rights on Roubaix bicycles

This article originally appeared on BikeRadar.

Specialized's attempt to defend the trademark "Roubaix" in Canada against a bike shop in Calgary has spiraled into a PR disaster, with the US giant coming under heavy criticism from a number of sides for flexing its legal muscle against a bike shop in Calgary.
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Specialized threatened legal action against Dan Richter, the owner of the Cafe Roubaix Bicycle Studio, for using the name "Roubaix", which Specialized had trademarked in Canada. Mr Richter, a retired war veteran, has said that he can't afford the legal fees of upwards of $150,000 to defend himself against the big red S. But in a David vs Goliath meets David's big brother style twist, he may be rescued by another industry heavyweight: Advanced Sports International, owners of the Fuji bicycle brand, which includes Roubaix models in its line.

According to Bicycle Retailer and Industry News, "ASI says it owns the worldwide rights to the Roubaix trademark ... and has licensed it to Specialized since 2003." And the company's International CEO Pan Cunnane says he is happy for Dan Richter to use the name for his bicycle shop.

"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," Cunnane was quoted by BRAIN as saying.

ASI is also telling Specialized to back off from this battle, as they don't believe Specialized has the authority to claim the Roubaix trademark in Canada.

Silver Bullet 11 months ago
Big S had the chance to back off of their own accord. Instead they dithered, allowed fuji to take the high ground while ensuring the brand damage of recent days is locked in place. A case study in shythouse brand management.
rastymick 11 months ago
How embarrassing for Specialized and how stupid! They wanted to play tough guy with a small, local bike dealer (how brave and honorable dear big S...) I'm living in Europe and even over there, pretty much everyone in the cycling community heard about the story and was disgusted by spezialized's bullying - this will (hopefully) cost them millions. A message to specialized: We cyclists stick together and we protect & provide our support to those little bike shops - even if they are thousands of miles away! I also have to say, very clever move from Fuji's Pan Cunnane - both thumbs up.
Lightening Toke 11 months ago
Why should we be pleased that Fuji now claims it owns the name "Roubaix" worldwide? And, apparently, it does under current, international trademark law! Hooray! Fuji will deign to license the name to the small bike shop! Justice! Trademark law is unknown to me, but the idea of corporations running about and trademarking names of cities and licensing the names to others is . . . wow.
tommy_nickels 11 months ago
It isn't necessarily a bad thing. Copyright law is a mess, no doubt, but working with the system we have, the easiest way to keep the name "Roubaix" functionally within public domain is to have the name owned by a body that only loosely protects it. It is a ridiculous workaround, but in this case it seems to work. Specialized wanted to keep it to themselves, but Fuji is the one that really owns it, and they are saying that anyone can use it (granted, this works only off of the assumption that Fuji's licensing process will be relaxed and inexpensive)
ShawnB 11 months ago
Yes, but the fact is that the City of Roubaix is the one that should own the rights to the use of Roubaix in commercial terms -- as a default. It doesn't make sense that anyone else claim to own such a thing, outright and worldwide-- without it being formally ceded to them by the native owner, in this case Roubaix, France. It's just like if a celebrity did this for a soda corporation. And it would be similarly nonsensical for the soda corporation to claim that they 'own' the use of that person's name, worldwide, for endless decades -- no, not without signing a mutually-amenable contract to do that, you wouldn't, guys. Why are towns different, again? If copyright followed sense and the precedent of other personal/proper names, it's the City of Roubaix that would license Fuji to use their name in certain markets -- defined narrowly by the company's core business. Otherwise, Fuji, Spec, and other world players should be unable to make any claims. Didn't we already go through this with Bordeaux? Some multinational corp can't simply make a claim on "Bordeaux" and name their food products that. Bordeaux owns "Bordeaux". Champagne (region) owns "Champagne". Especially in France and to do with patrimony and worldwide commerce, how are these not the governing cases?!
Juan Geovany Carrazana 11 months ago
Booom!!!
john rutherford 11 months ago
Always is a good feeling when a bully gets his just deserts , ASI have just scored a massive PR win agaist Specialized and Dan Richter can get his life back . Don,t you just love a happy ending especialy at Christmas time !!!
Stalky 11 months ago
I do love it…although Specialized is a better ride than the Fuji Roubaix
rastymick 11 months ago
Maybe in the past, but now, even only looking at anything with a specialized logo makes me feel uncomfortable.
nepetalactone 11 months ago
Then show ASI some love and get a Cannondale!
st0717 11 months ago
How is that showing Advanced Sports love?
Brady Rogers 11 months ago
um.....show ASI some love and get a FUJI. ASI has nothing to do with C'dale
Dr_Stav 11 months ago
Now how many cyclist will be hitting the Google search terms "Fuji + Roubaix"? How many cyclist that were thinking of buying a Specialised now may be giving their cash to an ASI brand?
Dr_Stav 11 months ago
As an addition, plugging "Fuji Roubaix" into Google trends already shows an increase in traffic. Well done ASI.
ValleyFlowers 11 months ago
Allez! Cafe Roubaix Bicycle Studio.
imsparkycus 11 months ago
Careful now. "Allez" is a registered trademark!
Stalky 11 months ago
Of Specialized, too!
Matic Robic 11 months ago
I doubt anyone could own a common French word!
Gary333 11 months ago
That's what Dan said when he first got the legal letter...
leftbehind 11 months ago
Wow, oh wow. When I previously did a trademark search and saw it was registered to Advanced Sports Inc., I should have dug deeper to see who they were. I just thought it was some kind of holding company for Specialized. It never occurred to me that ASI was the parent of Fuji. Way to go, ASI!!!
GreaseMonster 11 months ago
Head over to the INRNG blog, he's done a great round up of the major bike manufacturers, who owns what and who makes what for others.
leftbehind 11 months ago
Okay, this is going to get very confusing, I'm afraid. A search for Roubaix in the Canada Trademark registry (as opposed to the US registry which shows ASI as the owner) turns up Specialized as the owner. So while ASI owns the trademark in the US, Specialized owns the trademark in Canada. If Specialized is smart, they will very quietly license Roubaix to Richter and let the matter fade away. If they publicly fight back against ASI, ASI can still pull their American license of the trademark.
GoatHerd 11 months ago
Apparently Specialized disobeyed the agreement they signed w/ ASI & registered the name in Canada. So ASI might actually clamp down on Specialized on account of this. According to a Calgary Herald article, anyway.
Brian Handy 11 months ago
“Like many trademark owners, ASI does not register its trademarks in every country and never tried to register the mark in Canada. 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.” In a phone call, Cunnane noted that ASI has been able to reach amicable agreements with several other brands over trademarks. For example, ASI owns the U.S. rights to the name Gran Fondo for use on bicycles, while BMC owns the rights in Europe. The two brands have a co-existance agreement to share the name in both markets." -Bicycle Retailer and Industry News
Gary333 11 months ago
Maybe Fuji will pull their agreement with Specialized and they'll have to rename their bikes from Roubaix to just Cobbled Roads! ;)
avantage 11 months ago
This controversy is the best advertisement for all parties! :)
bianchi1885 11 months ago
Maybe not all parties. I'm never buying a Specialized product again.
Stalky 11 months ago
I view Specialized as the Buick of bicycles, aka old people bikes
epo1999 11 months ago
You ever ridden an S-Works Epic? Hardly a Buick. Well maybe a Stage 1 GSX...
meals-on-wheels 11 months ago
Dan Richter - owner of the little known Cafe Roubaix Bicycle Studio and thanks to Specialized now known among the global cycling fraternity and toasted in the Fuji boardrooms. I think business is looking good for you now Dan.
Gary333 11 months ago
Time for Dan to fly a big fat Fuji flag over his shop.
Not Eddy Merckx 11 months ago
Specialized's Roubaix line is a superb line of bikes. Specialized's corporate legal division, on the other hand, is not so superb. Talk about a company shooting itself in the foot!
JohnAVance 11 months ago
Oh yes. The finest in Chinese carbon with pretty stickers.
lets ride 11 months ago
yeah they dident think that one through did they!
Matic Robic 11 months ago
If by superb you mean pretty looking with so so quality I agree.
sbuschlen 11 months ago
Class Act Fuji, I think a Thank You is in order, so Thank You.
lets ride 11 months ago
yes sir
GoatHerd 11 months ago
My next bike will be a Fuji frame, custom built at the Café Roubaix Bicycle Studio :)))
Jesus from Cancun 11 months ago
Ha-Haaaaaa (cue Nelson from the Simpsons)
PavsWheels 11 months ago
darnit, that's what I was going to post! :)
dangermouse 11 months ago
How about "Excellent" - Mr. Burns. For a company that floods bike shops with their propaganda (not to mention magazines), Big S certainly bit the hand that feeds. Maybe I should go after them for stealing my name - Fatboy