Mahindra Roxor sales hurdles cleared

The US Trade Commission has cleared the path for sales of the Mahindra Roxor after the complaint by FCA.

Published On Nov 30, 2018 01:09:00 PM

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The Mahindra Roxor saga seems to have met its conclusion. The investigation conducted by the US Trade Commission Investigative Staff does not find any agreement violation for using the vehicle's approved grille design. The probe has "contractually barred [FCA] from pursing this investigation."

With this latest development, the over-120-day-long legal dispute between partners-turned-rivals FCA and Mahindra in the United States finally sees some closure.

A BRIEF HISTORY

The dispute arose between the former partners, when Mahindra launched the Roxor for the US market. On August 1, 2018, Fiat Chrysler Automobiles US had filed a complaint against Mahindra & Mahindra (M&M) and Mahindra Automotive North America (MANA) with the United States International Trade Commission (USITC). In its argument, FCA claimed that the Roxor infringes FCA's intellectual property rights because the Roxor's grille, which has five slots, is confusingly similar to the Jeep brand's seven-slot grille design. FCA had requested that the USITC issue a limited exclusion order and cease-and-desist orders against Mahindra & Mahindra and MANA.

Mahindra countered the argument saying that an agreement from 2009 barred FCA's pursuit of the infringement allegations because the Roxor uses the five-slot grille design that FCA approved for use in the 2009 agreement. On August 29, 2018, the company had issued a public statement in which it categorically rejected the notion that the Roxor was an imported, low-quality "knock-off" kit car."

On August 23, 2018, Mahindra filed a complaint in the Federal Court of Michigan on the issue of the applicability and enforcement of its 2009 agreement with Fiat. The company had said, “We are asking the court to block Fiat from participating in the ITC claim – an injunction – because of the fact that they agreed in 2009 to never bring such claims if we use a grille that they approved. The Roxor uses that grille. We are also arguing that Fiat is using the ITC case to harm our Roxor business by creating negative publicity, damaging our reputation and our stature in the marketplace.”

As per the official investigation documents accessed by our sister publication, Autocar Professional, the 2009 agreement arose from a dispute between Chrysler Group LLC and Mahindra. The dispute concerned Mahindra’s planned importation of vehicles that had a seven-slot grille design. Beginning in 2008, Chrysler asserted that Mahindra’s use of a seven-slot grille design would be confusingly similar to Jeep’s signature grille design. Mahindra disputed the assertion at that time. Nonetheless, over the course of around a year, the brand proposed three different grille designs that varied in the number of slots in each design. The first proposal included six slots, followed by eight slots, both rejected by the Jeep brand. The third proposal by Mahindra was a grille design having five slots and was accepted by Chrysler for vehicles being imported into the United States.

Accordingly, that dispute ended with the 2009 Agreement, in which Mahindra agreed to use a five-slot grille design on the vehicles it planned to import into the US. In exchange, FCA made a promise to not assert its trade dress, trademark, or “other intellectual property rights” against Mahindra’s vehicles, so long as the vehicles “contained or used” the approved grille design. Years after the 2009 Agreement (and in accordance with the parties’ understanding of the agreement’s terms) Mahindra adapted the Approved Grille Design to fit onto the vehicles (the Roxor) that Mahindra ultimately imported into the United States.