Fiat Chrysler wins trade case over Mahindra’s Jeep copy

By Susan Decker and Anurag Kotoky

A U.S. regulator ruled that India's Mahindra and Mahindra Ltd infringed upon the intellectual property rights of Fiat Chrysler Automobiles NV's (FCA) Jeep brand, barring the sale of the vehicles in question.

Fiat Chrysler Automobiles NV won the bid for an order to block U.S. imports of Mahindra & Mahindra Ltd.’s Roxor off-road vehicle that it said copies the look of the iconic Jeep Wrangler, the International Trade Commission said in a notice posted on the agency’s website.

The commission upheld, with modifications, a judge’s finding that Mahindra’s off-road vehicle is, indeed, a copy of the Jeep. The Trump administration can veto the ban on public policy grounds, though that rarely happens, and Mahindra pledged to appeal.

Fiat Chrysler claimed that the Roxor is a “nearly identical copy” of its Jeep, particularly the “boxy body shape with flat-appearing vertical sides and rear body ending at about the same height as the hood.”

Trade Judge Cameron Elliot in November found that the Roxor would infringe the trade dress of the Jeep as defined by six specific design elements, but not the registered trademarks for the Jeep’s front grille. He recommended that the commission block imports of the Roxor kits and components, saying Mahindra is purposefully trying to evoke the Jeep image, which would erode the value of the Wrangler.

Both sides asked the commission to review the portion of the decision they lost.

Mahindra, India’s largest maker of sport utility vehicles, makes the components in India and the Roxor is assembled at a plant in Michigan. It’s already hurting from a slowdown in India’s market for cars and trucks and reported no domestic sales in April because of the coronavirus pandemic. The U.S. market, the biggest in the world for off-road vehicles, could help it weather the pandemic.

Fiat Chrysler said it was “pleased with the USITC decision in this matter” but wanted to “study the decision further before offering any substantive comment.”

In January, Mahindra said the 2020 Roxor model had “significant styling changes” and that it would “make additional styling changes, if so required, in cooperation with the ITC.” The 2020 vehicle, dubbed “The Beast,” starts at $16,599, according to Mahindra’s website.

In a filing with the commission, Mahindra said its new models aren’t in violation, and that Fiat Chrysler is trying to grab “a practical monopoly over the import and sale of components used in any boxy, open-topped, military-style vehicle.”

Mahindra said in a statement that it and its North American unit “remain resolute in its position that the Roxor does not dilute or violate Jeep’s trade dress.”

“The vehicle that was subject of the action was produced in 2018 and 2019 and is no longer in production,” the company said. “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.”

Fiat Chrysler said in an agency filing that Mahindra plans to “design right up to the line of infringement,” and said any question of whether the newer models should be allowed in the U.S. can be decided later.

While COVID-19 has slowed the $12.2 billion market for off-road vehicles this year, sales are expected to rebound in 2021, with the biggest growth in North America, according to analysts at Stratview Research. The U.S. accounted for more than 60% of global off-road vehicle sales in 2018, the report said.

The case is In the Matter of Certain Motorized Vehicles and Components Thereof, 337-1132, U.S. International Trade Commission (Washington).