Wheels are getting hot: In Mahindra v. Fiat, Jeep Trademark Battle

16 Sep 2018

September 16,2018:

On September 11, 2018, a US Regulator said that it would launch an investigation into an off-road utility vehicle produced by Mahindra and Mahindra Ltd. following a complaint filed by Fiat Chrysler Automobiles.

The complaint filed by Fiat Chrysler Automobiles claimed that Mahindra and Mahindra Ltd. infringed upon the intellectual property rights of its Jeep design. Further clarifying their claim and throwing a jab at Mahindra, Fiat Chrysler Automobiles stated that Mahindra’s ROXOR ATV (all-terrain vehicle) is too underpowered to be considered a car and cannot be considered legal to hit the roads as it infringed upon the Jeep Trademarks which belong to Fiat Chrysler Automobiles, bringing the similarity of the overall design into the limelight.

Though the resemblance between the two can be easily noticed but Mahindra initially did obtain a license to make their own version of the (CJ-7) Jeep back when the brand was owned by Willys. Willys went bankrupt in 1963 after which the rights to Jeep landed in hands of many carmakers before the finally landed in the hands of Fiat Chrysler Automobiles. However, Mahindra continued to grow and produce their own Jeeps using a license issued by a defunct company. None of the new owners of Jeep tried to stop Mahindra from using the same license as they felt that Indian Market didn’t have a potential for Jeep and the cost associated with claiming the license would be extremely high.

However, when Fiat Chrysler Automobiles took it to US International Trade Commission (ITC), ITC said that it would investigate into Mahindra’s ROXOR ATV and complete its probe within 45 days. The complaint was related to sales and import of certain mobilized vehicles and components in the US, which Fiat Chrysler had alleged infringed on its trademark.

Rich Ansell, Vice President of Marketing, Mahindra Automotive North America further stated that along with ITC’s investigation of Fiat’s Chrysler complaint, ITC will also conduct a 100-day expedited consideration of the agreement signed in 2009 and its effect on the investigation.

Further, on 29th August 2018, Mahindra responded to the Fiat Chrysler Automobile’s allegations with a Public Interest Statement stating why ITC should rule against Fiat and in favour of Mahindra. The statement further stated that Fiat Chrysler Automobile’s complaint is "without merit".

Therefore, in the suit filed in Michigan Court, Mahindra is seeking an injunction against Fiat Chrysler Automobile from proceeding with the complaint.

In continuation, Mahindra said that though Fiat has not made any monetary claim they are still seeking to block Mahindra Automobiles from importing any components or parts into the US that infringe upon Fiat Chrysler’s IP rights.