Mahindra asks US courts to prevent FCA from proceeding in Roxor case

Following the complaint filed by Fiat Chrysler Automobile US on August 1 with the United States International Trade Commission to prevent Mahindra & Mahindra from exporting parts for the Roxor and Mahindra Automotive North America (MANA)  importing the same, the Indian manufacturer says it has taken a number of actions both within the ITC and in the Federal District Court, USA to prevent Fiat from proceeding in the matter.

FCA claims that the Roxor (which is based on the Mahindra Thar) infringes key characteristics of Jeep’s signature design. 

The FCA complaint alleges that certain design features of the details of the Mahindra Roxor infringe the intellectual property rights of dispute/ litigation – Fiat's Jeep design as it was modelled after the original Willys Jeep.

M&M says the case is without merit. On August 22, 2018, the company filed a Public Interest Statement with the ITC expressing its position on this matter and explaining how it is in the public interest for the ITC to rule against Fiat and in favour of Mahindra.

An M&M statement issued today says, “Our goals on the public interest statement were two-fold. One was to state our position on the merits and the other was to correct inaccuracies regarding Mahindra as a company and the Roxor as a product. We set the record straight on the history of Mahindra, including its US 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.

On August 23, 2018, Mahindra filed a complaint in Federal Court in Michigan on the issue of the applicability and enforcement of its 2009 agreement with Fiat. The company says, “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.”

Meanwhile, M&M and MANA have commenced a proceeding in the Federal District Court at Michigan to enforce the Grill Design Agreement that M&M had executed with Fiat in 2009 and to seek an injunction against Fiat from proceeding with the ITC complaint that has been filed by it.

Expected implications
According to M&M, “From the reading of the filing of Fiat, they have sought an order implications, if any, due to for permanently restraining the company from exporting, and compensation, penalty etc; MANA from importing, any parts or components which are infringing upon Fiat's intellectual property rights in to the US. There is no monetary claim such as compensation, damages, etc. sought by them. However, if they succeed in getting a permanent injunction from the company exporting infringing parts or components to the US and MANA importing the same in to the US, the company will not be able to sell such parts or components to the US and the sale of such parts or components by the company to MANA will be affected.”

Also read: Mahindra bets big on Roxor for the US market