Roxor could face BAN in the US as Judge finds Mahindra infringing Jeep design; Mahindra responds

Mahindra may no longer be able to sell the Roxor off-roader in the United States in the vehicle’s ‘present form’. Administrative Law Judge Cameron Elliot found that the Mahindra Roxor infringed on the design of Jeep’s ‘trade dress’, and recommended a ‘cease and desist’ order, which is meant to prevent Mahindra from selling the Roxor in the United States, reports CarScoops. Once Mahindra redesigns the Roxor’s front end styling, it may be able to continue selling the vehicle in the United States. For now though, sales of the Roxor are likely to be stopped by March 13th, 2020, after United States International Trade Commission confirms the judge’s orders, and gives a 60 day window to Mahindra for a presidential review.

Fiat Chrysler Automobiles (FCA), the Italian-American car alliance, which also owns the Jeep brand, had filed a case against Mahindra and the Roxor, alleging that the Roxor copied a Jeep design, and that the court ban the vehicle and prevent Mahindra from selling similar vehicles in the United States. For now, it seems that FCA  has managed to stop Mahindra from selling the Roxor in the United States, and has won this legal round against the Indian automaker. It remains unclear if Mahindra would appeal this order. We’d be surprised if Mahindra doesn’t appeal.

Meanwhile, the Italian-American car making alliance FCA issued the following statement following its legal victory,

FCA US is pleased that an Administrative Law Judge at the United States International Trade Commission has found that the Mahindra Roxor vehicle infringes the iconic trade dress of the Jeep brand. FCA US believes the evidence and relevant law all strongly support the ALJ’s determination that Mahindra has engaged in unfair trade practices, and that Mahindra’s infringement was harming or likely to harm the Jeep brand and FCA US. The ALJ has determined Mahindra violated 19 U.S.C. Section 1337 and that an order excluding infringing vehicles and components from entry into the U.S. is appropriate. In addition, the ALJ has also determined that a cease-and-desist order is appropriate preventing Mahindra from selling any vehicles already in the U.S.. 

Mahindra and FCA have been at loggerheads from the second half of last year, following the official launch of the Roxor off roader (side-by-side) in the United States. FCA filed a suit against Mahindra, seeking a ban on Roxor’s sales in early August 2018. Weeks later, Mahindra counter-sued FCA, arguing that the Roxor was an off-road only vehicle that’s not meant to compete with any of FCA’s existing line up of vehicles. Mahindra even managed to win a case against FCA, which allowed it to import and sell the Roxor in the United States after the Indian automaker reached an agreement to revise the Roxor’s front grille. Now though, the clock seems to have turned a full circle with the Mahindra Roxor getting banned in the United States.

Meanwhile, Mahindra has responsed with a statement of its own, and seem to be confident about winning this battle:

We are aware of recent media reports about an initial ruling made a few weeks ago by an Administrative Law Judge (ALJ) in our International Trade Commission (ITC) matter with FCA. The articles boil a 91-page opinion down to a few sentences, include misleading characterizations about the litigation to-date and fail to include several important and relevant facts about Mahindra and ROXOR.

For example, the reporting fails to point out that the ALJ concluded Mahindra’s ROXOR does not infringe on any of FCA’s registered trademarks and does not dilute FCA’s claimed Jeep Trade Dress. While the initial ruling concludes that the ROXOR violates “Jeep Trade Dress,” until this case, FCA had never defined what it believes to be the “Jeep Trade Dress” or identified it as a business asset in any filings (bankruptcy or otherwise). Instead, at trial, FCA admitted that it believes it can define and redefine its “Jeep Trade Dress” depending on the product it is challenging – an unreasonable, anti-competitive, anti-business stance that, if successful, could cost good-paying American jobs. It should also be noted that while the articles reference the Jeep CJ, no mention is made of the fact that FCA has not offered the CJ in the United States market for over thirty-five years. They also don’t mention that ROXOR is an off-road only vehicle or that it sells for under $16,000. Nor do the articles state than no one has shown that any ROXOR owners bought the vehicle thinking it was an FCA/Jeep product.

The ROXOR was engineered and developed in the U.S. and is based on the same platform as Mahindra’s Thar vehicle that is sold in India and many other markets. Mahindra has been manufacturing the Thar and its predecessors since just after World War II. The ROXOR’s resemblance to the CJ and military-style Willys jeep is directly related to this 70-year heritage.

The ROXOR is manufactured in Auburn Hills, Michigan at the first assembly plant to be built in Southeast Michigan in over a quarter of a century. Mahindra has invested hundreds of millions of dollars into building its U.S. operations and currently operates multiple facilities in the Detroit area. It employs more than 400 U.S. employees and hundreds more through its network of over 400 dealers and U.S. suppliers.

Ultimately, the ALJ’s opinion is only a recommendation, and we have asked the entire ITC to review it. The ITC has the discretion to either adopt the ALJ’s opinion in whole or in part, rewrite parts of it, or completely reject it. Therefore, it is very important to wait for the ITC review to be finalized. While there are reports of a cease and desist order with respect to the ROXOR, no such order has been entered. Finally, it was Mahindra, not FCA, who commenced the legal action in the Federal District Court in Michigan. We did this in an attempt to enjoin the ITC action and assert injury claims to our business and reputation as a result of unfair and anticompetitive actions by Fiat Chrysler.

We look forward to the next stage of the ITC’s review process and will continue to stand by the truth, genuineness and authenticity of our business.

Notably, Mahindra showcased a redesigned version of the Roxor a couple of weeks ago. It was showcased at the 2019 SEMA Motor Show, where the front end of the Roxor dumped the vertically slatted grille for a grille with a cylindrical honeycomb design. This makes the Roxor look quite different from the one that’s banned.

However, will it placate FCA enough for it to withdraw its case against Mahindra and the Roxor is something that only time can tell. Also, FCA is pursuing a separate infringement case against the Roxor in the United States District Court of Eastern Michigan, through which it not only seeks a ban on the Roxor but also ‘disgorgement of Mahindra’s profits from the infringing Roxor‘.