[Geo_Ipe]

Originally Posted by johannskaria

The Fiat Chrysler group filed the complaint on Aug. 1 at the U.S. International Trade Commission, claiming that the Mahindra Roxor infringes key characteristics of Jeep’s signature trade dress -- namely the “boxy body shape with flat-appearing vertical sides and rear body ending at about the same height as the hood.”

Are these points that will hold in a court of law?

“boxy body shape with flat-appearing vertical sides and rear body ending at about the same height as the hood.”
Couldn't this be seen as characteristics of any off-road vehicle? Mahindra changed the 7 slat grille to the 5 slat one to avoid being taken to court! Since when can't manufacturers make flat vertical sides and rear ending the same height as the hood, just because Jeep did so decades ago!

Also, why the hue & cry by FCA once the Roxor has gone on sale? I'm sure the authorities have cleared Mahindra to sell the Roxor in the US after seeing the design. Or did FCA not expect the Roxor to do well in the US market? Does anyone have sales figures of the Roxor in the US?

[devarshi84]

Is Mahindra naming its vehicle JEEP?
Is Mahindra copying any JEEP Vehicle currently on sale?
Is Mahindra using the ROXOR to directly compete with a JEEP vehicle?
Does Mahindra have the right to Portray their Legacy in Building licensed JEEP cars for decades?
or, is Mahindra just Blantantly copying a JEEP vehicle and refering to the similarity like the Chinese do?

Mahindra had the license to build and sell JEEP models historically. The license to use the name expired in 1992 as far as I know.

Mahindra is openly refering to the JEEP name because it made that car for decades. Its the Jeep vehicles that made Mahindra what it is today.

Secondly, there is not a single JEEP model that competes with Mahindra Roxor as a strictly offroad vehicle. Neither is the Mahindra calling their vehicle a JEEP. I do not see an issue with Mahindra selling the ROXOR (not jeep) with resemblances to an old JEEP which they used to manufacture under license which only reflects on their heritage, history and experience in building such cars.

The USA has the worst legal system in the world. Only recently a person killed another person over a parking spot in Florida and he wasn't even arrested thanks to their awesome laws.

I am with Mahindra on this one.

[CrAzY dRiVeR]

And Mr. Mahindra tweeted this reply -

[theMAG]

I don't have a good feeling about this for Mahindra. Even if the comparative discussion between the Roxor and Jeep were to be parked temporarily, the financial and political clout of Chrysler in the US would likely clinch this legal challenge for Chrysler.

[shashanka]

Originally Posted by mpksuhas

Came across this news article - Link

Yes, I too got the article from MotorBeam in the in-box yesterday. What one can conclude is that the Roxor may prove a threat to established players there. And the side-by-side market, being a neat entry into the US for M&M, would give good experience of ground realities - and possibly a planned future entry into the mainstream street legal market, which they have failed to do so far. Despite their presence in 2008 at the Detroit SAE congress with the full hybrid Scorpio (https://jalopnik.com/379332/indian-m...-indian-hybrid)

[Thermodynamics]

US market is tough. It is a land of most number of lawyers and law suits. 1.34 million and counting. Penalties for intellectual property rights / infringement can be huge. I wish M&M comes out undamaged. I wish they make a stronger come back with a revolutionary product in reply.

[kiku007]

http://www.team-bhp.com/forum/motorb...-pulsar-2.html

http://www.team-bhp.com/forum/intern...-carmaker.html

http://www.team-bhp.com/forum/intern...chinese-5.html

http://www.team-bhp.com/forum/intern...-thread-9.html

Mahindra - You were doing the right thing by milking the JEEP brand and design to shameless lengths in India. No one cared I suppose. But I hope you have the muscle to fight it out in the USA for doing the same. It isn't India or China.

Subtle or exact copy doesn't matter. If it's copy, it is a copy.

[shashanka]

Originally Posted by Thermodynamics

US market is tough. It is a land of most number of lawyers and law suits. 1.34 million and counting. Penalties for intellectual property rights / infringement can be huge. I wish M&M comes out undamaged. I wish they make a stronger come back with a revolutionary product in reply.

I too am keeping my fingers crossed and hoping for the same. Yes the US is undoubtedly the land of lawyers & lawsuits, often frivolous, with few cases going all the way & usually being settled out of court. On the other hand, the hounding of whistle-blowers like Mr. Assange or Snowden are glaring examples of a warped system at work. And with a dementia-patient like Mr. Trump at the helm, who knows.....

Originally Posted by kiku007

....Mahindra - You were doing the right thing by milking the JEEP brand and design to shameless lengths in India. No one cared I suppose. But I hope you have the muscle to fight it out in the USA for doing the same. It isn't India or China.
Subtle or exact copy doesn't matter. If it's copy, it is a copy.

From the way you are licking your chops in anticipation, it strikes me that you have already got it in for M&M! And you're right, the US isn't India or China - China has more than once shown where the US gets its comeuppance! I hope India too learns the ropes. They did it once before, when the US had - laughably - tried their usual concrete-headed muscle-flexing with their intellectual property gobble-de-gook by trying to patent the Basmati rice genome. The US was quick to backtrack on that occasion.

[SandyX]

https://www.courthousenews.com/wp-co...hindraJeep.pdf

By this Complaint, plaintiffs Mahindra and Mahindra Ltd. (“M&M”) and its affiliate Mahindra Automotive North America, Inc. and its subsidiaries (“MANA”) (together, “Mahindra”) seek an injunction to prevent FCA US LLC (“Fiat”) from asserting trademark and trade dress claims against MANA’s new ROXOR off-road-only vehicle, and for a declaration that the ROXOR does not infringe Fiat’s claimed intellectual property.

2. Fiat claims trademark rights in a vehicle grille design with seven parallel vertical slots. In 2009, the parties signed a contract memorializing Fiat’s agreement that a new M&M grille design with certain distinctive elements that were very different from the Fiat seven-slot grille (the “Approved Grille Design”) did not infringe Fiat’s claimed trademark rights. The contract also expressly stated that Fiat would not assert any intellectual property infringement claims against vehicles made or sold by M&M or any of its affiliates, provided the vehicles used the Approved Grille Design.

3. MANA’s new ROXOR uses the Approved Grille Design.

(Eventually, M&M agreed to incur the costs of a redesign and change to the distinctive Approved Grille Design. The new design used four and a half angled vertical slots with the “half” slot applied to a raised center panel and the federally-registered Mahindra MILLENNIUM logo trademark above it)



4. Despite the parties’ contract, Fiat recently filed a complaint against Mahindra in the International Trade Commission (“ITC”) making trademark and trade dress claims against the ROXOR—claims that it expressly agreed never to assert. Fiat’s bad faith in filing the ITC action is made plain by the fact that its primary claim seeks to ban the importation of the ROXOR grille notwithstanding the fact that the ROXOR grille is not imported. It was designed in Michigan; it is made in Michigan by a third-party manufacturer; and is used in MANA’s Michigan-based ROXOR manufacturing process.

5. Fiat’s filing constitutes a material breach of the contract, which has caused Mahindra substantial monetary and irreparable harm. Among other relief, Mahindra requests a preliminary injunction requiring Fiat to withdraw its ITC complaint immediately, and a declaration that the ROXOR does not violate any Fiat intellectual property.

The parties memorialized their agreement in a written contract. The contract states in relevant part:

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. 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 orusing the Approved Grille Design.

And it gets interesting!

Fiat’s trademark registrations for an automobile grille with seven vertical slots (U.S. Regis. Nos. 2,862,487; 2,161,779; 2,794,553; and 4,043,984) are invalid. The vertical slots are functional and cannot act as an indicator of source. Among other evidence of functionality, Fiat’s predecessors filed utility patents expressly touting the seven slotted grille design as functional. See, e.g., U.S. Patent No. 2,378,504.

43. Fiat’s predecessors also filed utility patents expressly touting the overall design of the historic JEEP as functional. See, e.g., U.S. Patent No. 2,278,450. As a result, its registered logo trademark, U.S. Regis. No. 4,272,873, is invalid and its unregistered claimed common law trade dress is invalid. Moreover, Fiat does not assert that Mahindra uses any two dimensional trademark incorporating the sillouette of an automobile, or that any of Mahindra’s trademarks are confusingly similar to the ‘873 Mark. Thus, Mahindra cannot and does not infringe the ‘873 Mark.

44. Fiat’s trademark registrations for an automobile grille with seven vertical slots (U.S. Regis. Nos. 2,862,487; 2,161,779; 2,794,553; and 4,043,984), registered logo trademark (U.S. Regis. No. 4,272,873), and its unregistered claimed common law trade dress are also invalid because they are generic and incapable of indicating source. Upon information and belief, numerous third parties use the designs or substantially similar designs to generically indicate a “4x4” or “off-road” vehicle without reference to source.

45. Fiat’s registered logo trademark, U.S. Regis. No. 4,272,873, and unregistered common law trade dress are also invalid because they lack secondary meaning. Consumers do not understand the primary purpose of the claimed mark and/or trade dress to indicate Jeep as source because Fiat is not the substantially exclusive user of the claimed designs. Upon information and belief, numerous third parties use the designs or substantially similar designs to either identify themselves or to indicate a generic “4x4” or “off-road” vehicle without reference to source.

46. Fiat’s registered logo trademark, U.S. Regis. No. 4,272,873, and unregistered common law trade dress are also invalid because they have been abandoned due to non-use and/or acquiesence. Upon information and belief, Fiat’s claimed trademarks and trade dress are no longer used by Fiat and have not been used for more than three years.

[shashanka]

This is encouraging news, SandyX! And I am seriously keeping my fingers crossed that M&M emerges from this contretemps - mauled maybe - but the winner at the end of the day!

[CrAzY dRiVeR]

Originally Posted by CrAzY dRiVeR

As per news items that came out in the US media before the launch of the Roxor - Mahindra not only had the license for production of their Jeep derivatives, but also renewed their licences with all the Jeep brand caretakers including FCA.

But that does not give them rights to sell the product in the US market, unless the license specifically grants them the right for it? Judging by FCA's response - may be it does not! Also - if it did, Mahindra would not have changed the grille and all - as compared to the Thar.

Guess my biggest doubt is answered now. Mahindra does have the right to sell the vehicle in the USA under their license agreement, just that the trademark grille had to be changed - which M&M has done.

Now this would be a very interesting fight.

The parties memorialized their agreement in a written contract. The contract states in relevant part:

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. 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 orusing the Approved Grille Design.

[blackasta]

Looks like this is starting to get interesting :

https://auto.ndtv.com/news/mahindra-...ome-topstories

[ashutoshb]

It appears to be a different interpretation of the same 2009 agreement between Mahindra and FCA.

Let's see what the court decides. If it takes long and the court stops the sales of the Roxor till time the case is on, it will be a big blow to Mahindra.

Going by Mahindra's reply, it seems that what they did was 'technically' not a breach of contract.

I read a comment somewhere, that this wouldn't have happened if Sergio Marchionne was here.

Two thumbs up to Mahindra's ballsy move though.

[ashutoshb]

Here is all what FCA feared.

A Mahindra Roxor with a Jeep grille, speed limit removed, being driven on the road.

http://www.youtube.com/watch?v=aX2RME-mhKs

They retuned the ECU, upped the power from 62 to 125 bhp.

These YouTube videos are not helping Mahindra's case, though.

[Flyer]

Despite the ongoing litigation with FCA, Mahindra to ramp up Roxor production.

Rajan Wadhera President, Automotive Sector, Mahindra & Mahindra said that the brand is already planning to increase production of the Roxor at its new Detroit facility as it is expecting to see demand for the vehicle increase.

In order to support this ramping up of production, the Indian brand is also looking at expanding its market presence in North America from its current network of 300 dealerships. Additional outlets have been planned for California state and even in neighbouring Canada, where it is expected to launch in showrooms next year.

Wadhera also revealed that the brand has so far produced 800 units of the Roxor, all of which have been dispatched to the brand’s dealers. Of these 800, 400 have already been sold through Mahindra’s US network

Source:ACI