It’s still on Hed if they want to defend it or not, which is a good reason to just chat with them directly.
But yeah, the similar-industry requirement is pretty loose. See: the whole Apple Corps (the Beatles) vs Apple Computer saga…
As said, it appears to be different in the EU regarding the use of that. But we are an honest business and we never had any intention of misleading customers or appear to be being HED so I just send mrs. Hed a message describing the current situation. Being completely transparent and honest, let’s see what comes from that.
Jeroen
1 Like
I just went through a trademark case that won a federal injunction against a company with a similar sounding, but different spelling name for a different product in the same industry.
The owner dug in his heels on terrible advice and received a serious scolding from the judge and ruled straight from the bench, lecturing opposing counsel in the process.
Even if HED says your fine for now, they or someone who even buys them at a later day can come after you.
Talk your loss early while it costs you virtually nothing.
Bike looks very awesome though. Did I miss the ETA?
1 Like
You could simply choose to not sell any of your frames in the US and there wouldn’t be a problem.
October and I’m very much looking forward to it no matter what the name is.
I dug into this, just because it is all very confusing.
But US and EU indeed appear to have a very different look at things.
Not saying that when HED contacts me back I will change the name but it appears to be not so black and white as you put it, at least not in the EU.
This is what Dutch law / Benelux law and that goes for most EU countries reads:
An unregistered name offers no legal protection under trademark law and cannot be enforced against infringers, because trademark protection only arises through official registration with a recognized trademark body such as the Benelux Office for Intellectual Property (BOIP) or EUIOP. Although there is a distinction between a trade name (which derives rights through use) and a trademark (which requires registration), a trade name also offers no protection against infringement of a registered trademark.
What happens without trademark protection?
No legal remedies: You cannot take action against others who use your unregistered name, even if you used it first.
Legal risks: Using an unregistered trademark carries the risk of conflicts, claims for damages, or the obligation to change your company name.
How do you obtain trademark protection? Registration with BOIP or EUIOP: To obtain trademark protection, you must register your name with the Benelux Office for Intellectual Property (BOIP) or EUIOP.
Registration: After successful trademark registration, your trademark is entered in the trademark register, and your trademark rights are established.*
Types of protection: Registration offers protection in the Benelux, the European Union (as a Union trademark), or worldwide through the Madrid System.
Key difference: trademark vs. trade name
Trade name: The right to a trade name arises automatically through its use. It is the name under which you do business.
Trademark: A trademark requires official registration to provide legal protection against infringement.
However, in the US you do have the unregistered trademark or the common law trademark understanding. But that is limited to where the brand it actually uses and promotes the name, it is most of the times limited to a very specific product. HED is not active in our country, nor in Belgium or Luxembourg, no distributor active, no advertisements, etc.
It can be used in some occasions in the UK as well, not a part of the EU anymore.
But the unregistered trademark, even if it is longer in use, is ‘overruled’ in the EU if somebody actually registers that name, even if it is for a similar or industry related product.
That said, I already made the decision to rebrand the wheels. There is enough trouble in this world and much bigger problems to solve then to create new ones just over road bike wheels…
The frame is a different story, I might need just rebrand that when we plan to sell big in the US if that even will happen at some point :-).
Jeroen
1 Like
(just to be clear, Bikey McBikeface can be yours for a fair price. Just get your legal team to draw up the papers.)
1 Like
Congrats on the bike design - it is a thing of beauty. I don’t need a new tri bike, but maybe I do now.
Two points regarding the potential naming issue:
(1) why choose to potentially confuse consumers when you could just choose a new name now (different if you’d only discovered the naming conflict once already in the market)? There’s no shortage of alternative names. As a potentially purchaser I couldn’t care less what it’s called vs what you’ve done (with culprit) on the front end, the storage, the geometry and the sleek design!
(2) the problem with convincing yourself that the legal technicalities are in your favour is that you might just get sued anyway and then have to invest time and energy and focus thinking about that rather than thinking about more positive things.
Best of luck with the launch!
3 Likes
That’s the thing with the frame, we used the Vanquish name on an open mold frame starting about 1,5 year ago. So defintely changing the name on the wheels as we do not want to mislead customers or pretend to be HED whatsoever.
So there is already brand awareness for that bike name and logo in our country as that is were they were sold before taking the step to make our own bike.
I need to think it all over during the weekend.
Jeroen
If you wanted to be aggressive about it, simply register Vanquish in the EU registry and in the USA even for that matter for use on bikes and if HED ever contacts you, send them your registration and tell them to sue you.
The US one would likely get overturned at 100k at least in costs to them and possibly you. The EU one would possibly stand. But at least then you’d feel you have some protection.
That’s definitely playing offense… But as has been said you could still end up in court anyway, or at least paying 15k in legal fees to send letters back and forth.
That’s kind of a dick move though. I’ve had other issues where someone contacted us about a product name that was similar sounding but different before launch and we immediately retooled the molding and changed it. I’ve also reached out with a friendly email to another CEO and showed him our prior and current use of a name we used and they promptly emailed back saying they apologize and would not sell or use it anymore and dispose of anything with that mark. Above and beyond what I asked (the disposal).
In legal cases the last thing you want is ego to get in the way as someone with money in the bank might just decide sending a lesson is worth it. So it’s good to talk directly to them, but if I’m HED there’s no chance I’m replying to that email without consulting a lawyer and no trademark lawyer will say sure it’s ok.
1 Like
As said, it will be a weekend full of thinking and thoughts to go over…
And it would be very easy if I not already invested quite a bit on the name for the bike frame. If that were not the case I would change it in a minute, but we already used that name on an open mold frame for good over a year.
Wheels, easy fix, will do that straight away as we have no intention to mislead customers or pretend to be HED or any other wheelmanufacturer for that matter
Jeroen
Vanquish seems to be a popular name for bicycles
https://www.legacybikeco.com/vanquish
The next one is interesting because you said the bike looks similar to a canyon speed max, and they have a model canyon speed max by the name of vanquish also
VNKWSH
problem solved
You’re welcome
1 Like
On a more serious note; why did you design the “tunnel” where the seat stays meet the seat tube?
What I said was this
Which is not the same as saying it looks like a Canyon Speedmax.
That ‘Vanquish’ model is only for US to see. It is not offered here in the EU nor can we see it online here in the EU.
edit: when we switch to you canyon us I do can see it. but it is still a model name and not a brandname.
Jeroen
Your point being??
I can design a pair of cycling socks and call them Vanquish, or shorts or whatever. If that doesn’t exist already…
Jeroen
Just for the fun of it, I can now say to you how much aero it makes the bike, that it saves you 10 watts or whatever…It does give the bike a different look compared to others. That’s why I said it is a mix in terms of looks to some of the bikes that other brands offer but also in some details different.It is hard to stand out when you decide to make a double triangle frame design.
It is a feature of aesthetics but you can also take it off and ride it without the ‘tunnel’.
Jeroen
1 Like
that will trigger an immediate aggressive lawsuit from Wahoo. they have a patent on missing vowels…
4 Likes
Biggest bang for the buck! 
