Italian-American automotive major Fiat Chrysler
Automobiles (FCA) has filed a trade complaint seeking to stop Mahindra & Mahindra
(M&M) from selling an off-road vehicle that it recently launched in the US, alleging that the Indian vehicle had ripped off designs from its iconic Jeep.
FCA filed the complaint on August 1 with the United States International Trade Commission, claiming that the Mahindra Roxor infringed key characteristics of Jeep’s signature trade dress —namely the “boxy body shape with flat-appearing vertical sides and rear body ending at about the same height as the hood”, reported Bloomberg.
FCA has alleged that the Roxor, which M&M
imports in the US from India as knocked-down kits, was “a nearly identical copy of the iconic Jeep design", adding that the product was modelled after the original Willys Jeep.
executives declined to comment on the matter. FCA spokespersons didn't respond to Business Standard
One corporate lawyer who declined to be named said there were three key determinants for IP (intellectual property) law infringement and they centred around trademark, copyright and patent violations. "In this case, at least from what we see, there is no trademark violation because the logos and the names of the vehicles are not similar at all. The engineering, the drive train and power train are also dissimilar, so that eliminates the patent option as well. This leaves the copyright infringement option as a possible area in which the companies are not seeing eye to eye," he said.
Nishad Nadkarni, associate partner with law firm Khaitan & Co, said the matter appeared less like it had to do with design rights, which were most likely restricted to the aesthetics and look and feel of a product. "The test for design rights is solely judged by the eye," he said, the key being to remember that any registration for design must be made before a car is launched and not after and that typically these rights only hold good for around 15 years even internationally. He added that the action seems to be an action in “passing off”.
This is said when the shape and configuration of a product is the reason for which a product is recognised as originating from Manufacturer A, Manufacturer A can seek to prevent Manufacturer B from manufacturing and making gains out of a product identical in shape and configuration.
One cannot ride on the reputation and goodwill generated by another. "That seems to be the claim," Nadkarni said. Regardless of how the issue is hammered out he expects the matter to be resolved within two years in the US where such matters move fast.
The Roxor which is a rugged-looking Willys style jeep powered by a 2.5 litre diesel engine and is estimated to have been priced at around $15,000 or around Rs 1 million. In comparison, Jeep's Willys Wheeler a fairly similar looking car is priced at $27,000. The vehicle is different in that its front grill has four and a half slots as compared to Chrysler Jeep's seven slots but the body arches of its wheels are trapezoidal or squarish like Chrysler's vehicles, said an industry observer.
Gautam Sen, a Paris-based automotive author, says that historically the race almost always comes down to this – whether panel for panel, are the vehicles identical? “Do the vehicles look so similar that most people would mistake them for each other and are the similarities strong enough to cause confusion amongst consumers?” he added.
Such tussles between international auto players aren't uncommon. Recently Jaguar Land Rover
had initiated legal action against Jiangling Motors of China because of the external design similarities between its Landwind SUV and JLR's Range Rover Evoque. Then in 2005 General Motors settled a long standing dispute with Chery Automobile of China over the small hatchback QQ which the American company alleged was a copy of its own small car called the Chevy Spark also known as the Matiz, designed by GM Daewoo in Korea.
Mahindra's passenger vehicle sales in recent years have been under pressure with falling unit sales in the face of competition coming from newer trendier SUVs made by players such as Ford, Maruti Suzuki and FCA. Last year M&M
opened Mahindra Automotive North America office and had announced plans to invest $600 million in its Michigan factory with a view to increasing its workforce and manufacturing the Roxor.