In a response to the FCA complaint filed with the International Trade Commission (ITC), Mahindra had earlier released a statement that it was aware of the matter and would be responding soon. And now it has, by filing its own complaint against FCA for a breach of contract, in the United States District Court, Eastern District - Michigan. NDTV carandbike has a copy of the filing, which states that the grille used on the Roxor is not liable to any copyright infringement as it is unlike the traditional 7-spoke grille that is used on Jeep vehicles. In 2009, Mahindra and Chrysler had come to an agreement and signed an official contract over the grille the former can use on its vehicles in the United States. Known internally as 'Approved Grille Design', the design used a 4 and a half slat design with the central slat raised slightly and also placed below the Mahindra logo. This is also the design that has been used on the Roxor.
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As we reported a few weeks ago, FCA or Fiat Chrysler Automobiles had approached the International Trade Commission in the United States to stop sales of the Mahindra Roxor off-road vehicle that was launched in March 2018. The new SUV, which cannot be registered for on-road use is based on the Mahindra Thar that we get in India but bears a different grille as Mahindra does not have the rights to use the iconic seven slat grille in the United States. The iconic seven slat grilles, like the one seen on the Jeep Wrangler has been a trademark of the Jeep brand since inception and features the vertical seven slats combined with two round headlamps and two round foglamps. In comparison, the Roxor used the four and a half slat grille combined with the round headlamps as explained above.
In an official statement sent exclusively to NDTV carandbike, speaking on the case filed against FCA, a Mahindra spokesperson said, "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."
In the contract that was signed by Mike Manley in 2009, when Jeep was still a part an an independent Chrysler Corporation (and not acquired by Fiat at the time), it had stated that it would not assert 'any claim for infringement of Chrysler's trade dress, trademark, or other intellectual property rights in the United States based on: (1) a grille having the Approved Grille Design; or (2) a vehicle containing or using the Approved Grille Design' against M&M or its affiliates.
In its complaint to the ITC, Fiat Chrysler had also said, "The Roxor imports threaten it with substantial injury as they are underselling Jeeps. Mahindra capitalises on the cost advantages of manufacturing their products in India and then importing knocked-down kits to the U.S., where they're assembled in the Detroit area." Responding to this allegation, Mahindra has also countered that claim by stating that not only is the Roxor grille manufactured in Michigan by a third party vendor but it was also designed in the United States at Mahindra's facility in the same state.
M&M has also said that Fiat's breach of contract has caused 'monetary and intangible harm to Mahindra.' The Indian automaker has also stated that the complaint to the International Trade Commission by FCA so soon after the launch of Mahindra Automotive North America (MANA)'s new product is 'to arrest and halt the positive momentum of signing up new dealers and customers.' The automaker added, 'It is also damaging the Mahindra and ROXOR brands in the minds of dealers and consumers in ways that would be difficult or impossible to fully measure; and which could mean the difference between a successful and profitable vehicle launch and a failed vehicle launch.' Mahindra's complaint goes on to claim that 'Fiat's breaches of the contract have caused, and will continue to cause, Mahindra irreparable harm, including loss of goodwill, harm to reputation, and loss of fair competition and competitive advantage.'
The Indian automaker has further pointed out that Michael Manley - who signed the contract in 2009, was then President and CEO of Jeep and is now the CEO of FCA. Mahindra has appealed to the court to find that the contract signed in 2009 is valid and that FCA's conduct constitutes a breach of contract. It has requested the court to declare that the Mahindra Roxor design does not infringe Fiat's design in terms of the grille and that Mahindra be awarded damages caused by Fiat's conduct in the form of equitable monetary relief, attorney fees and any other damages that the court deems worthy.
carandbike has reached out to FCA Group for comment or statement on this development and have received no comment on the same.
