(This September 2022 story has been corrected to clarify that the decision ordered the lower court to reconsider whether ‘safe distance’ rule applied)
By Blake Brittain
September 19, 2022 (Reuters) – Fiat Chrysler on Monday received a second chance to permanently block U.S. sales of redesigned Roxor off-road vehicles made by Indian carmaker Mahindra & Mahindra Ltd, which is fighting claims that it copied Fiat Chrysler’s Jeep design.
The 6th U.S. Circuit Court of Appeals said that a Detroit federal court may have applied the wrong standard when it found that Mahindra’s post-2020 Roxors were unlikely to cause consumer confusion.
A spokesperson for Mahindra said it was confident that the outcome of the case will be “consistent with the previous rulings” in its favor. Fiat Chrysler’s parent company Stellantis NV declined to comment on the decision.
Fiat Chrysler sued Mahindra in Michigan court and at the U.S. International Trade Commission in 2018 over its Roxor design, arguing it copied trademark-protected elements of its Jeeps.
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.
But the 6th Circuit said Monday that the court may have had to hold Mahindra to a higher standard because it was already a known infringer. Mahindra’s new design may be required to keep a “safe distance” from Jeep designs, U.S. Circuit Judge Helene White wrote for a three-judge panel.
“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 said.
The appeals court sent the case back for the Detroit court to reconsider whether the new Roxors had to keep a safe distance from the Jeep design.
The case is Mahindra & Mahindra Ltd v. FCA US LLC, 6th U.S. Circuit Court of Appeals, No. 21-2605.
For Mahindra: Mary Hyde of Honigman
For FCA: Frank Cimino of Venable
Read more:
Fiat Chrysler tells U.S. appeals court redesigned 4x4s still copy Jeep design
U.S. regulator modifies ban to allow Mahindra to sell new Roxor models in Jeep case