Mahindra is again battling a legal dispute in the US with Stellantis, the parent company of the Fiat Chrysler brand. The American carmaker has received a second chance to permanently block the US sales of redesigned Roxor off-road vehicles made by Indian carmaker Mahindra & Mahindra Ltd, which is fighting claims that it copied Fiat Chrysler's Jeep design. The 6th U.S. Circuit Court of Appeals said that a Detroit federal court applied the wrong standard when it found that Mahindra's post-2020 Roxors were unlikely to cause consumer confusion.
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Fiat Chrysler sued Mahindra in Michigan court and at the U.S. International Trade Commission (ITC) in 2018 over its Roxor design, arguing it copied trademark-protected elements of its Jeeps. Then, a Detroit federal court blocked Mahindra from selling pre-2020 Roxors but rejected its bid to block sales of its redesigned version of the off-road-only vehicle. U.S. District Judge Gershwin Drain's decision was based on an ITC ruling that the Roxor did not infringe Fiat Chrysler's trademark rights because the average person would "know immediately" from looking at it that it is not a Jeep.
Earlier, a U.S. District Judge said that the Roxor did not infringe Fiat Chrysler's trademark rights because the average person would "know immediately" from looking at it that it is not a Jeep.
However, the 6th Circuit Court said that the court should have held Mahindra to a higher standard because it was already a known infringer. Mahindra's new design was required to keep a "safe distance" from Jeep designs, U.S. Circuit Judge Helene White wrote for a three-judge panel. "Because a court can order even a non-infringing product under the safe-distance rule, the simple fact that a known infringer's redesigned product is non-infringing does not support the conclusion that the safe-distance rule should not apply," White said.
Team carandbike has reached out to Mahindra for a statement, but is yet to hear back from them.
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1945 Jeep Willys CJ
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The appeals court sent the case back to the Detroit court to consider whether the new Roxors kept a "safe distance" from the Jeep design. Earlier, Mahindra's attorney Mary Hyde of Honigman told the panel there was no precedent that required courts to consider the safe distance rule, and that making it a "standard of universal application" would be a "fundamental and unwarranted shift in trademark law."
