Mahindra & Mahindra on Friday said a judge of the US International Trade Commission has found that its off-road vehicle Roxor violated Fiat Chrysler Automobile's (FCA) Jeep 'trade dress' and recommended an exclusion order prohibiting import and sale of any already imported parts of the vehicle.
The homegrown auto major further said that FCA has filed a counterclaim in the proceeding filed by it before the Eastern District Court of Michigan, seeking a permanent injunction on manufacture or sales of the Roxor, as well as disgorgement of any profits made by the Mahindra & Mahindra (M&M) from sales of the vehicle.
"If FCA succeeds in getting a permanent injunction, then Mahindra Automotive North America, a subsidiary of the company, will no longer be able to sell Roxors in the US," M&M said in a regulatory filing.
On the US ITC order, the company said "the Administrative Law Judge (ALJ) has, in his initial determination, found that while the design of the Roxor vehicle does not violate any of FCA's registered trademarks, it violated FCA's trade dress and recommended an exclusion order prohibiting the importation of Roxor parts and a cease-and-desist order prohibiting sale of any already imported Roxor parts."
Trade dress is a form of intellectual property that identifies the look of a product and distinguishes it from its competitors.
The firm, however, said the initial determination made by the administrative law judge of the ITC is a non-binding recommendation to the ITC and the company has asked the same to be reviewed.
When contacted, a company spokesperson said, "...until this case, FCA had never defined what it believes to be the 'Jeep Trade Dress' or identified it as a business asset in any filings (bankruptcy or otherwise)."
The spokesperson further said, "Ultimately, the ALJ's opinion is only a recommendation, and we have asked the entire ITC to review it".
The ITC has the discretion to either adopt the ALJ's opinion in whole or in part, rewrite parts of it, or completely reject it. Therefore, it is very important to wait for the ITC review to be finalised, the spokesperson added.
Roxor was launched on March 2, 2018, to be sold in the US and Canada. Soon after, FCA lodged a complaint with the US ITC alleging that it is a copy of Willys Jeep and the design elements of Mahindra's product infringes some key design elements of Jeep.
Roxor is manufactured in Auburn Hills, Michigan. Mahindra has invested hundreds of millions of dollars into building its US operations and currently operates multiple facilities in the Detroit area.
It employs more than 400 US employees and hundreds more through its network of over 400 dealers and US suppliers, the spokesperson said.
Image: Courtesy, www.roxoroffroad.com.