JEEP TAKES A SMALL WIN AGAINST THE ROXOR
Special from Automotive News
The legal battle between Jeep and Mahindra won’t stop the Indian automaker from showing its vehicles at the 2019 Detroit auto show, but the company’s long-term prospects for continuing to sell the Roxor in the U.S. are still in doubt.
Fiat Chrysler Automobiles filed a trade complaint with the U.S. International Trade Commission in 2018, arguing that the Mahindra Roxor infringes on Jeep “trade dress” — a trademarked image or appearance of a product. The concept of trade dress is considered just below the status of a patent, making enforcement difficult at times for established users of the trade dress, which is also a factor in the case.
Jeep recently won a round in the dispute when the U.S. International Trade Commission determined that the company is not contractually barred from enforcing its trade dress following an agreement with Mahindra years ago. The details of the latest decision are complex: In 2009, Mahindra sought to bring another vehicle called the Scorpio, a midsize SUV, to the U.S.
The Scorpio in India had a seven-slot grille vaguely reminiscent of that of the Jeep Grand Cherokee at the time, and the two automakers agreed on a different design for Mahindra’s SUV if the company introduced the Scorpio in the states. Specifically, the companies agreed that if Mahindra used the agreed-upon grille design on the Scorpio, Chrysler would not pursue any intellectual property claims against Mahindra.
“Chrysler consents to the use and incorporation of the grille design shown in Exhibit A (hereinafter the ‘Approved Grille Design’) in vehicles sold and advertised in the United States by Mahindra and/or its affiliates and authorized dealers,” the agreement stated. “Chrysler agrees and warrants that it will not assert against Mahindra, its affiliates, authorized dealers, or customers, or anyone else, any claim for infringement of Chrysler’s trade dress, trademark, or other intellectual property rights in the United States based on: (1) a grille having the Approved Grille Design; or (2) a vehicle containing or using the Approved Grille Design.”
The Scorpio never came to the U.S. but the agreement between the companies remained in force as a contract, which Mahindra recently used in the U.S. International Trade Commission proceeding. Mahindra’s argument is that FCA should be prevented from filing claims of trade dress and trademark infringement against it because the Roxor has the 4.5-slat grille that’s vaguely similar to what was agreed upon in 2009.
Thanks to Automotive News.