Mahindra & Mahindra’s second attempt at retailing SUVs in the US market has been challenged by Fiat Chrysler Automobiles (FCA), which has filed a complaint alleging infringement of design by the Indian company.
On August 1, FCA US LLC filed a complaint with the United States International Trade Commission alleging violations of section 337 of Tariff Act 1930 in which it claims that Mahindra’s off-road utility vehicle Roxor is a copy of the Jeep design IP.
A mail sent to M&M remained unanswered at the time of publishing the article.
In an earlier instance, M&M had planned to launch its SUVs in the US in 2009. But due to regulatory issues the launch never happened forcing its dealer partners in the US to file a law suit against the company in mid-2012. M&M also sells an electric scooter and a range of tractors in the US.
Similar design language
M&M manufactures the Roxor in India and exports it to US as knocked down kits which are then assembled at M&M’s manufacturing plant in Michigan for sale by dealers throughout the United States. Fiat Chrysler has termed Roxor sale as unlawful and unauthorized.
To bolster its case, FCA has used some of the drive reviews published by media houses including the Wall Street Journal and The Detroit News, where they have mentioned about the Roxor design language being similar to that of Jeep.
“Mahindra NA’s website show that they (Roxor) are a nearly identical copy of the iconic Jeep®design and incorporate the Jeep Trade Dress and Jeep Design Marks. In fact, the Accused Product was “[m]0deled after the original Willys Jeep” and copied down to the undercarriage of the historic Jeep® CJ”, FCA’s petition said.
While one of the reviews mentioned that Mahindra has secured rights for using Jeep product designs. FCA has strongly denied this.
“Mahindra has no right to use the Jeep IP. FCA owns and retains full rights in the Jeep IP and has not granted a license to Mahindra to use the Jeep IP in any country, including the United States. FCA’s predecessors did have prior dealings with Mahindra India, granting Mahindra India limited contractual rights to manufacture and/or sell Jeep branded components and products in India beginning in the 1940s. And none of those contracts at any time granted Mahindra India (or any other Mahindra entity) ownership rights over Jeep brand-related intellectual property. Nor did any of these past agreements grant any rights to manufacture, sell, or advertise vehicles, such as the Accused Products, incorporating the Jeep IP in the United States”, FCA said.
FCA claims that the boxy body shape with flat appearing vertical side and rear body panels ending at about the same height as the hood, substantially flat hood with curved side edges that tapers to be narrower at the front, trapezoidal front wheel wells with front fenders or fender flares that extend beyond the front of the grille, flat appearing grille with vertical elongated grille slots and a trapezoidal outline that curves around round headlamps positioned on the upper part of the grille, exterior hood latches and door cutouts above a bottom portion of the side body panels have been lifted from the Jeep IP.
FCA also claims that the marketing activities used by M&M to promote the Roxor will cause confusion and deceive a potential customer into believing that the Roxor is a product associated with the Willy’s Jeep, one of the iconic models of Jeep.
“Mahindra’s marketing promotes the Roxor as being “modeled” on the “Willys Jeep”and FCA’s predecessor vehicles, making it more likely that consumers will draw a false association between the Accused Products and FCA. Upon information and belief, respondents’ (M&M) infringement is willful in that respondents know that they do not have the right to use the Jeep Trade Dress in the United States. Respondents are further capitalizing on the goodwill and reputation associated with the Jeep Trade Dress”, FCA stated in its petition.
M&M launched the Roxor, an off-road but not street legal, SUV in March 2018 in the US. Priced at $15000 and powered by 2.5 litre, 4 cylinder diesel engine, the Roxor is based on the Thar with no doors and no hard top roof and without a windscreen.
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