Fiat Chrysler Pursues Mahindra & Tries to block M&M's 4x4 in Jeep Trademark Case

Mahindra's revamped Roxor off-road vehicles get a second opportunity to be permanently banned from sale in the United States thanks to Fiat Chrysler.

The Detroit federal court's determination that Mahindra's post-2020 Roxors were unlikely to cause consumer confusion was deemed by the 6th U.S. Circuit Court of Appeals to have used the incorrect test.

According to a Mahindra spokeswoman, the company is optimistic that the case's result would be "compatible with the prior verdicts" in its favour. Stellantis NV, the parent company of Fiat Chrysler, declined to comment on the choice.

In 2018, Fiat Chrysler claimed Mahindra's Roxor design stole trademark-protected components of its Jeeps and filed a lawsuit against it in Michigan and before the U.S. International Trade Commission.

Mahindra's attempt to stop sales of its rebuilt version of the off-road-only vehicle was rejected by a federal court in Detroit, which halted sales of Roxors manufactured before to 2020. The ITC determined that the Roxor did not violate Fiat Chrysler's trademark rights since the typical person would "know instantly" from looking at it that it is not a Jeep. U.S. District Judge Gershwin Drain based his conclusion on this finding.

However, the 6th Circuit said on Monday that because Mahindra was already a known offender, the court ought to have held it to a stricter standard. According to U.S. Circuit Judge Helene White's opinion for a three-judge panel, Mahindra's new design had to maintain a "safe distance" from Jeep designs.

White said, "Because a court can enjoin even a non-infringing product under the safe-distance rule, the simple fact that a known infringer's redesigned product is non-infringing does not support the conclusion that the safe-distance rule should not apply."

The appeals court remanded the matter to the Detroit court so that it could determine whether the new Roxors maintained a "safe distance" from the Jeep design.

Mahindra & Mahindra Ltd. v. FCA US LLC, No. 21-2605, 6th U.S. Circuit Court of Appeals.

Mary Hyde of Honigman for Mahindra

Frank Cimino of Venable for FCA