Mahindra Roxor Violates FCA’s Trade Dress: U.S. Judge

It, however, does not violate any of FCA’s trademarks

December 2019 Powersport News The Hindu | www.thehindu.com

A U.S. judge has ruled that the design of Mahindra & Mahindra’s (M&M) Roxor vehicle violated Fiat Chrysler’s (FCA) trade dress.

The ruling follows a complaint filed by FCA before the U.S. International Trade Commission (ITC) against M&M and Roxor.

The Administrative Law Judge found that while Roxor’s design did not violate any of FCA’s registered trademarks, it violated FCA’s trade dress. The judge has recommended an exclusion order prohibiting the import of Roxor parts and a cease-and desist order, prohibiting the sale of any already-imported Roxor parts.

“The Initial Determination made by the Administrative Law Judge of the ITC is a non-binding recommendation to the ITC and the company [M&M] has asked the same to be reviewed,” M&M said in a regulatory filing with the BSE.

“The ITC will consider the Initial Determination and review applications filed by the parties and make a Final Determination,” it added.

Meanwhile, the FCA has filed a counterclaim in the proceeding filed by M&M before the Eastern District Court of Michigan, seeking a permanent injunction on the manufacture or sale of Roxor as well as disgorgement of any profit made by M&M from the sales of Roxor.

“If FCA succeeds in getting a permanent injunction, then Mahindra Automotive North America (MANA), a subsidiary of the company, will no longer be able to sell Roxors in the U.S. The company believes that no claim for disgorgement of profits arise,” M&M said.

Stating that FCA’s complaint is without merit, M&M said in response that it has filed a public interest statement with the ITC and expressed its position on this matter and explained how it is in the public interest for the ITC to rule against Fiat and in its [M&M] favour.

In a public interest statement, M&M has stated its position on the merits and corrected inaccuracies regarding Mahindra as a company and the Roxor as a product.

“We set the record straight on the history of Mahindra, including its U.S. operations. We also demonstrated that the Roxor is a vehicle that was always intended only as off-road, does not compete with Fiat vehicles, is manufactured and assembled in the first OEM plant to be built in Michigan in the last 25 years, was the result of more than three years of research and development and categorically rejected the notion that the Roxor was an imported low-quality “knock-off” kit car,” M&M added.

It said on August 23, 2018, it had filed a complaint in Federal Court in Michigan on the issue of the applicability and enforcement of its 2009 agreement with Fiat.

“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,” M&M said.

FCA has not sought any monetary compensation or damages.

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