Specialized...you may want to rethink this one

[Dangermouse]

I hope it works for Cafe Roubaix!

I think it has, Dan has had to order in more clothing as he has nearly sold out of everything according to the emails, his café Roubaix shirt has sold out and has 100s of back orders for it.

 

[Mr Haematocrit]

All this excitement.... I hear Durex have a trademark on the term 'Rubber' and they are going after Schwalbe, Continental and others.
Im enraged and would boycott them if I was not Catholic

 

[User169]

You do know what an 'affirmative duty' is, don't you? Specialized are only required to meet the obligations of the affirmative duty if they wish to uphold the trademark. There is no requirement or obligation, as you suggest, "to pursue all infringement of their trademark". They only have to take the action if they wish to enforce the trademark.



They do not, as you suggest, "...HAVE to sue any company who infringes upon it, whether they're a big guy, or a little guy, or whether it's threatening to them or not...". They can decide not to but what they than can't do is subsequently seek to enforce the trademark if they have not undertaken any affirmative action in relation to the relevant breach.

And I would point out that the US and Canada have different legal systems and different trademark systems. It's a bit silly to quote US legal blogs in relation to Canadian trademarks. Why not simply go to the Canadian Intellectual Property Office where all the information is available?

Anyone who has studied international law (which was part of my degree at university) will be familiar with the WIPO, the Madrid Agreement and the Madrid Protocol.

How are "affirmative duties" relevant in this instance? It's not a term I've ever heard of in relation to IP enforcement (other than in the context of willful infringement of US patents).

 

[User169]

Not sure it's necessarily as clear cut as BRAIN suggests. As I read the report, Specialized has a registration in Canada. It may be that Specialized will take the view that their registration is valid and that they have the right to enforce it.

 

[Dangermouse]

Not sure it's necessarily as clear cut as BRAIN suggests. As I read the report, Specialized has a registration in Canada. It may be that Specialized will take the view that their registration is valid and that they have the right to enforce it.

Their registration is valid, it is valid for them to use the name Roubaix, but not for them to determine who else can use it, that's up to ASI.

 

[User169]

Their registration is valid, it is valid for them to use the name Roubaix, but not for them to determine who else can use it, that's up to ASI

I'm not sure that all of those points can be true at the same time!

According to the Brain report, ASI takes the view that Specialized’s registration is “inappropriate” in the light of the license agreement. The term “inappropriate” may be carefully chosen.

Let's see what Specialized has to say.

 

[Dangermouse]

I'm not sure that all of those points can be true at the same time!

According to the Brain report, ASI takes the view that Specialized’s registration is “inappropriate” in the light of the license agreement. The term “inappropriate” may be carefully chosen.

Let's see what Specialized has to say.

But ASI are saying that they own and licence the rights to use the word Roubaix, or am I reading a different report.
If they own it as stated, then its up to ASI who use the name and not Specialized

 

[totallyfixed]

But ASI are saying that they own and licence the rights to use the word Roubaix, or am I reading a different report.
If they own it as stated, then its up to ASI who use the name and not Specialized

Well, I have worked my way through all 9 pages and I still don't get how anyone can own the rights to the name of a place. I can only assume that each and every inhabitant of Roubaix France is a shareholder of ASI, if they are not and I lived in Roubaix, I might be a tad pi55ed off.

 

[ufkacbln]

I know it is unlikely....

But wouldn't it be Karma if Specialized had to stop using the name

 

[snailracer]

Well, I have worked my way through all 9 pages and I still don't get how anyone can own the rights to the name of a place. I can only assume that each and every inhabitant of Roubaix France is a shareholder of ASI, if they are not and I lived in Roubaix, I might be a tad pi55ed off.

The system relies on someone challenging the validity of the trademark, the trademark office doesn't itself assure validity - it would be impossible to check for every conceivable reason for invalidation, if you think about it. The town of Roubaix could, in principle, challenge the validity of ASI's trademark. Of course, this creates endless possibilities for litigation so lawyers won't starve ££££....

 

[snorri]

Why any business would want to associate with a name that has brought such heartbreak I just can't understand

View: http://www.youtube.com/watch?v=MCjzhDrlTJ8

 

[Gravity Aided]

I thought it was nice that the owner of Cafe Roubaix thanked folks for getting all riled up about this here.

 

[Flying_Monkey]

Specialized's boss has reigned in his lawyers and said 'sorry' to the Café: http://www.cyclingnews.com/news/sinyard-takes-responsibility-and-apologises-to-cafe-roubaix-owner

 

[asterix]

Maybe all cycling forums should rename their 'Cycle Chat Cafe' type areas 'Cafe Roubaix' as a protest and a reminder?