People over this side of the world aren’t familiar with Roxor range of vehicles that Mahindra sells in North American market. It is derived from the previous generation Thar. It is imported into America via CKD route and is assembled in Detroit. Soon, it garnered a lot of attention towards it owing to its design similarities with Jeep.
Brand Jeep has been owned by Chrysler since 1987 and is now under Stellantis. It is a through-and-through American brand. Mahindra had pulled the plug on Roxor off-roader in North America following accusations from Fiat-Chrysler. The accusations revolved around violation of design patents held by then FCA (now Stellantis) against Mahindra.
In around six months, Mahindra came up with a newly designed front fascia. Mahindra went way out of its limbs to make Roxor look different from Jeeps of yesteryears. Fenders, wheel arches, wheel wells, bonnet design, hood latches, and vertical slots in the grille among many, were eliminated completely.
Known as post-2020 Roxor, it was given a green signal. Folks at FCA were not very happy regarding this. To continue the saga, Stellantis now gets another chance to retaliate. It is in the form of a block of post-2020 Roxor sales in the US permanently. A Mahindra’s spokesperson is confident that the result will be in conjunction with previous rulings, in its favour.
The 6th US Circuit Court of Appeals said that the Detroit court that lifted the ban on Roxor products saying that they are unlikely to cause confusion with Jeeps, applied the wrong standard. This Detroit-based court had blocked Mahindra Roxor products pre-dating 2020. But, it ruled out FCA’s requests to block post-2020 Roxor.
US District Judge Gershwin Drain came to this decision based on an ITC ruling that post-2020 Roxor did not infringe FCA’s trademark rights. The reason given was that an average person would “know immediately” from looking at it and recognise that it ain’t a Jeep.
The 6th Circuit Court said on Monday that the Detroit court should have held Mahindra to a higher standard as it is already a known infringer. US Circuit Judge Helene White wrote for a three-judge panel that post-2020 Roxor was required to keep a safe-distance from Jeep’s design trademarks. White further said that, because a court can enjoin even a non-infringing product under safe-distance rule, the simple fact that a known infringer’s redesigned product is non-infringing does not support the conclusion that safe-distance rule should not apply.
Now the challenge lying ahead for Roxor is to be certified by the Detroit Court whether it has indeed kept a “safe distance” from Jeep’s design trademarks. More information regarding Mahindra & Mahindra Ltd v. FCA US LLC, 6th US Circuit Court of Appeals, No. 21-2605, will revolve soon. Mahindra is confident that they will have the verdict in their favour.