The new Mahindra Roxor seemed like the perfect off-road toy: side-by-side (SxS) four-wheeler modeled after the iconic Willys Jeep of World War II. Who wouldn’t want to play in the dirt in that? Evidently, one group doesn’t want that for you: Fiat Chrysler, which now claims in a complaint to the U.S. International Trade Commission that the Roxor infringes upon the intellectual property of its iconic brand, Jeep. And it doesn’t want the Roxor sold or even advertised in America.
The complaint, filed Wednesday (and shown in full at the bottom of this article), claims that Mahindra has “engaged in unlawful acts...through their unlicensed importation, sale for importation, or sale after importation of... products that infringe and dilute FCA’s distinctive Jeep vehicle trade dress.”
FCA defines that trade dress as the following design features:
(i) A boxy body shape with flat appearing vertical side and rear body panels ending at about the same height as the hood;
(ii) Substantially flat hood with curved side edges that tapers to be narrower at the front;
(iii) Trapezoidal front wheel wells with front fenders or fender flares that extend beyond the front of the grille;
(iv) Flat appearing grille with vertical elongated grille slots and a trapezoidal outline that curves around round headlamps positioned on the upper part of the grille;
(v) Exterior hood latches;
(vi) Door cutouts above a bottom portion of the side body panels
FCA says Mahindra’s unapproved imitation of these features cause confusion and are likely to “deceive potential consumers and the public” about the connection between the Roxor and Jeep brand, going on to say that Mahindra marketing their Roxor as being “modeled” on the “Willys Jeep” isn’t helping with that confusion.
“Mahindra has no right to use the Jeep IP,” the complaint states, then continuing by saying FCA owns the full rights to Jeep intellectual property, and that it “has not granted a license to Mahindra to use the Jeep in any country, including the United States.”
The complaint goes on, discussing the nature of the agreements that Jeep has had with Mahindra—which got its start building Willys Jeeps under license in the 1940s—over the years:
FCA’s predecessors did have prior dealings with Mahindra India, granting Mahindra India limited contractual rights to manufacture and/or sell Jeep®-branded components and products in India beginning in the 1940s... And none of those contracts at any time granted Mahindra India (or any other Mahindra entity) ownership rights over Jeep brand-related intellectual property. Nor did any of these past agreements grant any rights to manufacture, sell, or advertise vehicles, such as the Accused Products, incorporating the Jeep IP in the United States.
FCA claims that Mahindra’s unauthorized use of Jeep design features is causing “great and irreparable substantial injury to FCA, the Jeep brand, the Jeep Trade Dress, and to the business and goodwill represented and protected by them.”
That damage is a result of Mahindra’s foreign cost advantages it gets by building the parts in India and shipping them to the U.S., and by being part of such a huge company with such enormous manufacturing capacity, FCA claims. These could allow the Roxor to “undersell” the Jeep Wrangler. According to the Italian-American company, some consumers looking to purchase an off-road vehicle may opt for the off-road-only side-by side instead of the significantly more modern, street-legal Jeep Wrangler.
For these many reasons, FCA wants to kill the Roxor entirely, emphasis mine:
“FCA seeks relief from the Commission in the form of a limited exclusion order, excluding from entry into the United States Accused Products that infringe the Jeep IP. FCA further seeks cease and desist orders halting Respondents from conducting any of the following activities in the United States: importing, selling, marketing, advertising, distributing, transferring, or soliciting U.S. agents or distributors for, vehicles that incorporate or display or are marketed or sold in connection with the Jeep IP or designs that are confusingly similar to the Jeep IP.”
Jalopnik reached out to Fiat Chrysler, who provided a statement similar to the paragraph above. It reads:
FCA US is requesting that the International Trade Commission open an investigation of Mahindra’s intentional trade dress and trademark infringement of our Jeep brand related to the import, distribution and sale of the Roxor product in the U.S. Specifically, we are requesting that the ITC issue an exclusion order to prohibit Mahindra from importing the infringing product into the U.S. We cannot comment further at this time as this matter is under review by the Commission.
Jalopnik also reached out to a Mahindra spokesperson, who was unaware of the complaint, and who told us “no comment” until he could reach out to the company’s legal team for a statement. Update 12:36 p.m. ET: Though Mahindra’s spokesperson initially told Jalopnik he was unaware of the complaint, another Mahindra spokesperson says in an email that the company learned about the complaint yesterday, but that Mahindra had not yet been “served.”
Update: Friday, Aug 3, 2018, 3:25 p.m. ET: Here’s Mahindra’s full statement:
We understand that a complaint has been filed by FCA with the United States International Trade Commission (ITC) against Mahindra. Mahindra has not yet been served with the complaint and we prefer not to comment at length on the dispute at this time. However, we have reviewed FCA’s core filing and find it to be without merit. Mahindra has a historic relationship and agreements with FCA and its predecessors that go back seventy years. The relationship began in the 1940’s with the original agreement with Willys and continues to this day, with the most recent agreement executed with FCA (then Chrysler Group LLC) in 2009. Our actions, products, and product distribution (including ROXOR) both honor the legacy of the relationship and the terms of our agreements with FCA. Mahindra has been co-existing with FCA (and the Jeep brand) for over 25 years in India and in many other countries. The ROXOR is a derivative of Mahindra vehicles distributed in those markets. Based on these agreements and our history, we believe that FCA’s claims are baseless and Mahindra is well within its rights to both manufacture and distribute the ROXOR off-road vehicle.
Let’s hope this claim doesn’t throw a wrench into what should be one of the most fun off-roaders we’ve seen in a while.
Here’s the full complaint to the U.S. International Trade Commission; it’s worth reading:
Correction: Friday, Aug 3, 2018, 13:30 p.m. ET: This story originally said FCA presented these claims in a lawsuit. As of now, it appears to just be a complaint to the U.S. International Trade Commission calling for the organization to open an investigation into the matter.
This post has been updated with new statements from Mahindra.