Fiat Chrysler sued Mahindra in Michigan courts and at the U.S. International Trade Commission in 2018 over its Roxor design, alleging that it copied trademark protected elements on its Jeeps.
On Monday, Fiat Chrysler received a second chance to block sales of the redesigned Roxor all-terrain vehicle in the US made by two Indian automakers Mahindra and Mahindra Limited.
The U.S. 6th Circuit Court of Appeals held that a Detroit federal court applied the wrong standard when it found that Mahindra’s post-2020 Roxors were unlikely to cause consumer confusion.
A spokesman for Mahindra said it was confident that the outcome of the case would be “consistent with previous rulings” in their favor. Stellantis NV, the parent company of Fiat Chrysler, declined to comment on the decision.
A Detroit federal court is blocked Mahindra from selling Roxors before 2020, but rejected a bid blocking sales of the redesigned version of the off-road 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” from looking at it that it wasn’t a Jeep .
But 6th Street said Monday that the court should have held Mahindra to a higher standard because it was already a known violator. Mahindra’s new design is required to keep a “safe distance” from Jeep car design, U.S. Circuit Judge Helene White wrote to a panel of three judges.
“Because a court can order even a non-infringing product under the safe-distance rule, the simple fact that a redesigned product by a known violator is non-infringing does not support concluded that the safe-distance rule should not apply,” White said.
The appeals court sent back the file for a Detroit court to consider whether the new Roxors kept a “safe distance” from the Jeep’s design.
The case is Mahindra & Mahindra Ltd vs FCA US LLC, US 6th Circuit Court of Appeals, no. 21-2605.
First published date: September 20, 2022, 11:27 AM IST