Jeep loses US court case against Mahindra

FIAT Chrysler Automobiles (FCA) – now absorbed into Stellantis – has lost its long-running bid to block Mahindra from assembling and selling its redesigned Roxor four-wheel drive in the United States after claiming the Mumbai-based manufacturer copied the design of its Jeep.

The Eastern District Court of Michigan ruled that Mahindra Automotive North America can continue to produce, sell, and distribute Roxor models made after 2020, denying FCA’s “safe distance rule” on the lookalike model.

Bearing an unmistakable resemblance to the Jeep CJ5, the Roxor is sold in North America as a UTV (utility task vehicle), meaning it cannot be registered and is deemed only for off-road use.

FCA claimed the Roxor is a “near identical copy” of the CJ5 with some design elements, including the “boxy body shape with flat-appearing vertical sides and rear body ending at about the same height as the hood” appearing too close to the 1954 original.

On August 1, 2018, FCA (then the intellectual owners of the Jeep brand) filed a complaint with the US International Trade Commission claiming that Mahindra engaged in “unlicensed importation” and sale of “products that infringe and dilute FCA’s distinctive Jeep vehicle trade dress” and demanded the cessation of Roxor production and sale in the North American market.

“FCA further seeks cease and desist orders halting Respondents from conducting any of the following activities in the United States: importing, selling, marketing, advertising, distributing, transferring, or soliciting US agents or distributors for vehicles that incorporate or display or are marketed or sold in connection with the Jeep IP or designs that are confusingly similar to the Jeep IP,” said the 2018 FCA complaint.

While FCA insisted the matter be handled by the International Trade Commission, Mahindra requested the matter be kept within the local courts of Michigan, where FCA is based and the Roxor is assembled.

Mahindra responded to the complaint by filing a lawsuit in late August of 2018 alleging that FCA’s complaint had caused significant reputational damage to the Roxor while also impacting sales. The suit cited a 2009 legal dispute between the pair that proved Mahindra had written permission from FCA to build and style the Roxor as it had.

“Chrysler consents to the use and incorporation of the grille design shown (Approved Grille Design) in vehicles sold and advertised in the United States by Mahindra and/or its affiliates and authorised dealers,” the statement read.

“Chrysler agrees and warrants that it will not assert against Mahindra, its affiliates, authorised dealers, or customers, or anyone else, any claim for infringement of Chrysler’s trade dress, trademark, or other intellectual property rights in the United States based on a grille having the Approved Grille Design, or a vehicle containing or using the Approved Grille Design.”

A year after the statement was issued, Mahindra released the Thar four-wheel drive in the United States, a vehicle that bears an uncanny resemblance to the Jeep Wrangler.

FCA then alleged that Mahindra had produced a copy of the Jeep Wrangler without its permission. Mahindra insisted it was within its legal rights, saying the meaning of a legal document cannot be changed after the fact.

In June 2020, the International Trade Commission (ITC) said that while the Roxor does not violate FCA’s trademarks, it does infringe the brand’s trade dress and recommended prohibiting the import and sale of Roxor parts.

Mahindra contended that the Roxor’s 2018 and 2019 models – which were the subject of the legal action – were no longer in production and that the 2020 version had a different enough look that would again be altered in the future.

In December that year, the ITC ruled that the post-2020 Roxor does not infringe on the Jeep trade dress, modifying its previous order to exempt the redesigned Roxor from an import ban.

However, in September 2022, the Sixth US Circuit Court of Appeals sent the case back to the Detroit court to assess whether the new Roxor had indeed maintained a “safe distance” from Jeep’s trade dress.

It took a further nine months to make its decision, which it now seems is finalised.

The Mahindra Roxor UTV is designed for farm use in much the same way as a side-by-side produced by the likes of Polaris and Can Am. It is priced from $US20,599 ($A30,670) and features a 2.5-litre four-cylinder turbo-diesel engine producing 46kW and 195Nm.

It runs a five-speed manual transmission and dual-range transfer case, offering a payload of 160kg and towing capacity of 1600kg.

A closed-in ‘all weather’ model with heating and air-conditioning is available from $US28,739 ($A42,250).