Fiat Chrysler gets another chance to block Mahindra 4x4s in Jeep brand case

Fiat Chrysler was given a second chance on Monday to permanently block U.S. sales of redesigned Roxor off-road vehicles made by Indian automaker Mahindra & Mahindra Ltd, which disputes claims it copied Fiat Chrysler’s Jeep design .

The 6th United States Circuit Court of Appeals said a Detroit federal court applied the wrong standard when it found Mahindra’s post-2020 Roxors were unlikely to confuse consumers.

A Mahindra spokesman said he was confident the outcome of the case would be “in line with previous rulings” in his favour. Fiat Chrysler’s parent company, Stellantis NV, declined to comment on the decision.

Fiat Chrysler sued Mahindra in Michigan court and at the United States International Trade Commission in 2018 over its Roxor design, arguing that it copied trademarked elements of its Jeeps.

A Detroit federal court barred Mahindra from selling pre-2020 Roxors, but rejected its bid to block sales of its redesigned version of the all-terrain 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” by looking at it that it is not. not a Jeep.

But the 6th Circuit said Monday the court should have held Mahindra at a higher level because he was already a known infringer. Mahindra’s new design was necessary to keep a “safe distance” from Jeep designs, US circuit judge Helene White wrote for a three-judge panel.

“Because a court can bar even a non-infringing product under the safe distance rule, the mere fact that a known infringer’s redesigned product is not infringing does not support a conclusion that the safe distance rule social distancing should not apply,” White said. .

The appeals court sent the case back to the Detroit court to consider whether the new Roxors kept a “safe distance” from the Jeep’s design.

The case is Mahindra & Mahindra Ltd v. FCA US LLC, 6th US Circuit Court of Appeals, No. 21-2605.

For Mahindra: Honigman’s Mary Hyde

For FCA: Frank Cimino of Venable

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