Jeep, FCA Score USITC Victory in Mahindra Roxor Infringement Case
As it turns out, the very Jeep-like Roxor is a bit too Jeep-like.
The automotive world was treated to a rare look inside the politics of the American auto industry last fall when General Motors filed a racketeering lawsuit against Fiat-Chrysler Automobiles (FCA) for allegedly bribing UAW officials in a bid to undercut it. But, with the automotive world being a complex place, that was not the only legal action FCA saw this past holiday season: On behalf of the Jeep brand, it won an interim victory in its International Trade Commission infringement case against Mahindra's Roxor, which we can all agree looks a lot like an old Jeep. This week, the victory was made final, with the U.S. International Trade Commission (USITC) issuing orders to force Mahindra to stop production and sales of the Roxor as currently designed.
The interim finding issued by the USITC last fall had to be confirmed in order to be enforced; that's what has happened this week. The new findings support the previous interim decision, confirming the Roxor's resemblance to the Jeep CJ constitutes a violation of section 337 of the Tariff Act of 1930. The outcome is a Limited Exclusion Order (LEO) that will prevent further import of the Roxor or its components, and a Cease & Desist Order (CDO) to prevent further use of the infringing likeness.
The Roxor is a side-by-side-style off-road vehicle that isn't intended to be street legal. It's made by Mahindra & Mahindra LLC, through its Mahindra Automotive North America arm. At the root of FCA's complaint was the Roxor's marked likeness to a Jeep CJ, despite a 2009 agreement between Mahindra and Jeep that allowed the former to use a pre-approved, slightly modified version of the latter's signature grille design for its Scorpio vehicle. Roxor had planned to sell the Scorpio the United States.
FCA's complaint was filed with the USITC in August 2018. The complaint alleged infringements of Jeep's intellectual property through appropriation of its "trade dress," a legal term of art that refers to the general appearance, packaging, or brand image of a product. Mahindra attempted to make the Roxor look less like a Jeep for 2020, but didn't go far enough, it seems.
Mahindra Automotive North America supplied the following comment on the outcome to Automobile:
"The International Trade Commission has upheld the Administrative Law Judge's determination which held that the ROXOR does not violate any of FCA's registered trademarks, but it violated FCA's trade dress and has recommended an exclusion order prohibiting the importation of Roxor parts and a cease-and desist order prohibiting sale of any already imported Roxor parts.
"The Company and Mahindra Automotive North America, a Subsidiary of the Company ("MANA") remain resolute in its position that the ROXOR does not dilute or violate Jeep's trade dress.
"MANA is therefore considering its options with respect to a further review and appeal of the ITC Determination both during the Presidential review phase of the ITC decision and at the Federal Circuit Court of Appeals.
"The vehicle that was subject of the action was produced in 2018 and 2019 and is no longer in production. The ROXOR design was refreshed for the 2020 model year and further design changes are in the works as part of the normal design cycle.
"MANA remains committed to the ROXOR brand, its employees, and its dealers. "