Fiat Chrysler has a second chance to stop Mahindra 4x4s in trademark dispute

Fiat Chrysler, now a part of Stellantis, on Monday was given another chance to stop Mahindra & Mahindra’s redesigned Roxor off-road vehicles from being sold in the United States. M&M is contesting allegations that it copied Fiat Chrysler's Jeep design, Reuters has reported. 

The Detroit federal court's determination that Mahindra's post-2020 Roxors were unlikely to cause consumer confusion was deemed by the 6th US Circuit Court of Appeals to have used the incorrect test.

According to a Mahindra spokesperson, the company is optimistic that the case's result will be "compatible with the prior verdicts" in its favour. Stellantis NV, the parent company of Fiat Chrysler, declined to comment on the decision.  In 2018, Fiat Chrysler claimed Mahindra's Roxor design copied trademark-protected components of its Jeeps and filed a lawsuit against it in Michigan and before the U.S. International Trade Commission.

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.

However, the 6th Circuit said on Monday that because M&M was already a known infringer, the court should have held it to a stricter standard. According to US Circuit Judge Helene White's reasoning for a three-judge panel, Mahindra's new design had to maintain a "safe distance" from Jeep designs. "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 reportedly said. 

The appeals court remanded the matter to the Detroit court so that it could determine whether the new Roxors maintained a "safe distance" from the Jeep design.