Fiat Chrysler gets new chance to block Mahindra 4x4s in Jeep trademark case

Fiat Chrysler was given a second chance to win U.S. sales of Indian automaker Mahindra & Mahindra’s redesigned Roxar SUV on July 17. block forever.
The Sixth Circuit Court of Appeals said a federal court in Detroit may have applied the wrong standard, determining that Mahindra’s Roxars was unlikely to cause consumer disruption in 2020 and beyond.
A spokesperson for Mahindra said he was confident the outcome of the lawsuit would be in his favor “consistent with past judgments”. Fiat Chrysler’s parent company Sterantis NV declined to comment on the decision.
Fiat Chrysler sued Mahindra in Michigan court and in the United States in 2018. The International Trade Commission against Roxor’s design claimed that the company copied trademarked elements from Jeep.
A Detroit federal court blocked Mahindra from selling pre-2020 Roxors, but rejected its bid to block sales of its redesigned version of the off-road-only vehicle. U.S. District Judge Gershwin Drain`s decision was based on an ITC ruling that the Roxor did not infringe Fiat Chrysler`s trademark rights because the average person would “know immediately” from looking at it that it is not a Jeep. But the 6th Circuit said July 17 that the court may have had to hold Mahindra to a higher standard because it was already a known infringer. Mahindra`s new design may be required to keep a “safe distance” from Jeep designs, U.S. Circuit Judge Helene White wrote for a three-judge panel.
“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,” White said. An appeals court has remanded the case back to Detroit court to consider whether the new Roxor should retain a margin of safety from the Jeep’s design.
The action is Mahindra & Mahindra Ltd v. FCA US LLC, Court of Appeals for the Sixth US Circuit, No. 21-2605.