The “Side By Side” segment is filled with many interesting off-road vehicles. Chief among them? The Mahindra Roxor. It’s essentially an updated Jeep CJ. You can buy one right now for about $16,000. But it’s not street legal. And it might be banned in America if FCA gets its way.
If you haven’t been following the latest FCA vs. Mahindra developments, here it is in a nutshell. FCA thinks the Mahindra shouldn’t be sold in America. This ongoing fight started in 2017. Unfortunately for Mahindra, FCA seems to be winning, as a judge representing the United States International Trade Commission recently decided the Roxor violates Jeep’s trade dress. Trade dress refers to the visual aspects that make a copyrighted product unique. The judge concluded that the Roxor infringed on Jeep in six specific areas.
This latest decision is not a final ruling. The 96 page decision by Administrative Law Judge Cameron Elliot will go before the United States International Trade Commission, which is a federal agency. They’re the ones who will decide the Roxor’s fate. Mahindra obviously disagrees with the ruling, and in a statement to Jalopnik, fiercely defended their business model and the Roxor itself. Here is the statement in full:
“We are aware of recent media reports about an initial ruling made a few weeks ago by an Administrative Law Judge (ALJ) in our International Trade Commission (ITC) matter with FCA. The articles boil a 91-page opinion down to a few sentences, include misleading characterizations about the litigation to-date and fail to include several important and relevant facts about Mahindra and ROXOR.
For example, the reporting fails to point out that the ALJ concluded Mahindra’s ROXOR does not infringe on any of FCA’s registered trademarks and does not dilute FCA’s claimed Jeep Trade Dress. While the initial ruling concludes that the ROXOR violates “Jeep Trade Dress,” until this case, FCA had never defined what it believes to be the “Jeep Trade Dress” or identified it as a business asset in any filings (bankruptcy or otherwise). Instead, at trial, FCA admitted that it believes it can define and redefine its “Jeep Trade Dress” depending on the product it is challenging – an unreasonable, anti-competitive, anti- business stance that, if successful, could cost good-paying American jobs.
It should also be noted that while the articles reference the Jeep CJ, no mention is made of the fact that FCA has not offered the CJ in the United States market for over thirty-five years. They also don’t mention that ROXOR is an off-road only vehicle or that it sells for under $16,000. Nor do the articles discuss the fact that no ROXOR owners bought the vehicle thinking it was an FCA/Jeep product.
The ROXOR was engineered and developed in the U.S. and is based on the same platform as Mahindra’s Thar vehicle that is sold in India and many other markets. Mahindra has been manufacturing the Thar and its predecessors since just after World War II. The ROXOR’s resemblance to the CJ and military-style Willys jeep is directly related to this 70-year heritage.
The ROXOR is manufactured in Auburn Hills, Michigan at the first assembly plant to be built in Southeast Michigan in over a quarter of a century. Mahindra has invested hundreds of millions of dollars into building its U.S. operations and currently operates multiple facilities in the Detroit area. It employs more than 400 U.S. employees and hundreds more through its network of over 400 dealers and U.S. suppliers.
Ultimately, the ALJ’s opinion is only a recommendation, and we have asked the entire ITC to review it.
The ITC has the discretion to either adopt the ALJ’s opinion in whole or in part, rewrite parts of it, or completely reject it. Therefore, it is very important to wait for the ITC review to be finalized. While there are reports of a cease and desist order with respect to the ROXOR, no such order has been entered. Finally, it was Mahindra, not FCA, who commenced the legal action in the Federal District Court in Michigan. We did this in an attempt to enjoin the ITC action and assert injury claims to our business and reputation as a result of unfair and anticompetitive actions by FCA.
We look forward to the next stage of the ITC’s review process and will continue to stand by the truth, genuineness and authenticity of our business.”
Basically, Mahindra feels that FCA cannot properly define how the Roxor directly infringes on any modern Jeep product. They also feel that the Roxor does not compete with Jeep because it cannot be legally driven on public roads. Mahindra also pointed out that to date, no Roxor owner has come forward saying they were confused as to whether or not the Mahindra was a Jeep product. These all seems like pretty reasonable arguments.
I think there’s a pretty easy solution here. To my knowledge, FCA/Jeep does not build any type of side-by-side vehicle. Why can’t they just sign an agreement with Mahindra that nets them a percentage of the Roxor’s profits? Heck, Mahindra could even explicitly build Jeep their own CJ side-by-side. Why hasn’t this happened? Does a Wrangler or other modern Jeep compete with these things on off-road courses? That’s the only reason why FCA might feel it necessary to get the Roxor banned. But that seems farfetched to me.
But what do you think? Any lawyers out there want to chime in about Mahindra’s chances?
What bolsters Mahindra’s case, from what I understand, is that Mahindra originally licensed the Jeep design from Willys way back when, and that license has been renewed with each of the many companies that have owned Jeep over the years, including FCA. In addition, the fact that the Roxor is an off-road-only vehicle makes it intrinsically not in direct competition with the Jeep Wrangler.
Bolstering FCA’s case is that having not built the CJ in decades is irrelevant, since the Wrangler is clearly designed to carry on the basic look of the CJ. Jeep could have kept calling the Wrangler the CJ if they wanted, just as they kept calling it a Wrangler through several generations, the most recent being the JL replacing JK, and the issue of trade dress wouldn’t change. This should be settled out of court with Mahindra agreeing to prominently state in all Roxor marketing materials that they are not affiliated with Jeep or FCA. I think FCA is worried simply because they want the Wrangler perceived as being a unique-looking product and the best available off-road vehicle, and the Mahindra challenges both of those assumptions. They’re probably less worried about Mahindra themselves than they are other automakers (i.e. a future Bronco or reborn Hummer) being able to sell near-clones of the Wrangler by citing the Roxor.
Note: I am not a lawyer.
My guess is that FCA feels that if they opened the door and let Mahindra built a near copy of their iconic product that others would “take advantage” of the situation and the precedent and feel entitled to build knock offs of their own.
I’m surprised that FCA (from a long chain before) doesn’t have as a part of its licensing agreement that the licensed product and derivatives can’t be sold in the USA.
Everybody tries to act like FCA are the bad guys here because they like the Roxor, but I think they’re right. That vehicle could be made in such a way to look a lot less like a Jeep without harming its function. Somehow they think that changing the shape of the door cutout and the grille bars means that nobody will notice that the rest is pure Jeep CJ as recently as 1986. As far as I’m concerned, on or off road use has little to do with how much it looks (and is meant to look) like an old Jeep.
I tend to agree with Dave’s comment that the Roxor is trading on its resemblance to a “Jeep”. Whether that is the look of a 60 year old CJ or a modern Wrangler is a subtlety that most people don’t care about or even notice. Earlier this year we walked past a lot full of rental Roxors in Moab, Utah, and my wife commented on “all the little Jeeps”. And by the way, in Utah (and perhaps Arizona too) these Roxors and other ATV’s and SxS’s can be registered as street legal.
On the other hand, imitation is flattery and FCA should feel flattered, and I’m sure they’re not losing business to Mahindra. Work out a licensing deal and move on.
There are lots of licensing opportunities here. Usually where there is money to be made, there is a way. Surprised one hasn’t been found yet.
Mahindra building a CJ for Jeep would be an interesting twist. Mahindra is basically building a Jeep CJ under a license from Jeep that dates back to 1947. I would be interesting to see Mahindra license back to Jeep a product that was originally licensed to them by Jeep in the first place.
The Roxor is too close in function to a Wrangler to simply license it, unless FCA actually wants to be in the mini Wrangler business. The Roxor has a subset of the capabilities of the wrangler. It isn’t a toy copy that has no real utility.
To share the sentiment of the rest of the commentariat…
None of the posts/articles I’ve read on this topic have enlightened me on the specifics of the licensing agreement between Mahindra and (presumably) Willys. My two main questions are:
A] is it open-ended, or is there an end date?
B] does it specifically preclude Mahindra from selling license-built Jeeps in the USA?
If there’s no end date and the agreement does not preclude Mahindra from selling Jeeps in the US, I can’t see where FCA has any legitimate beef.
I’d agree with Evan’s concise assessment.
> A] is it open-ended, or is there an end date?
It is open-ended
B] does it specifically preclude Mahindra from selling license-built Jeeps in the USA?
Not to my knowledge. Here’s more info on the legalities: https://jalopnik.com/this-is-why-mahindra-can-build-tiny-jeeps-1823472625
There is precedent for this argument, and I can think of two big examples: Shelby Cobra kit-cars and Ferrari clones made from existing vehicles (GTOs made from Datsun Z-cars and 308s made from Fieros).
In the former, Shelby lost, but Ferrari prevailed. I have no idea how they played out in court but I’m going to guess that since the Cobras started life as ‘kits’ and not a completely different car (like the Datsuns and Fieros), that’s how they got around it.
But here’s the thing about those Cobra kits: they’ve went a long way to expanding and enhancing the Shelby mystique and legend. Without all those fake Cobras running around, I dare say that Shelby wouldn’t be half as well-known and famous as he eventually became.
So, since the Mahindra Roxor is completely original, even though it’s effectively trading on its Jeep lookalike appearance, I’d say it’s more akin to the Cobra lawsuit. But maybe the difference is that the real Cobra went out of its quite low production a half century ago, while the real Jeep has continued on quite a robust production since the end of WW2.
Plus, I suppose it could be argued that the original Cobra was essentially a kit-car, anyway.
The “haven’t built the CJ in 35 years…” I am not sure that this is a conclusive argument. Harley doesn’t build Panheads any more but they have a clear visual linage in their design language: even though there is not a single piece or part that is identical to a 1930’s Harley Davidson, a brand new Harley is still clearly “Grandfather’s Axe”, er, Grandfather’s Harley.
Further it’s not like Mahindra is making vacuum cleaners or toaster ovens with Jeep design language – their product is clearly intended to be used in exactly the same market to which Jeep sells. Now, it’s not the function of the vehicle we are talking about – there was no fuss from Jeep about the Suzuki Samurai et al, but the projected image. If Mahindra were to agree to put pointy nose grill and mouse ears on their *oops almost said Jeeps* little off-road vehicles, I am sure that Jeep would withdraw the lawsuit.
As it is, Mahindra is purely benefiting from their similarity to old “pure” Jeeps. Without that their product would be viewed in an entirely different light.
But Harley has never attempted to stop any other manufacturer from building a V-twin cruiser. They just live with the fact that they own that class of motorcycle, no matter what the competition builds.
Are you kidding? Harley is notoriously vigilant in protecting every element that it can possibly trademark. They even tried to get trademark protection on the -sound- of their exhaust.
Harleys have a distinctive design and exhaust note and in 1994, the company filed a sound trade mark application. The distinctive sound of the Harley-Davidson motorcycle engine is produced by V-twin, common crankpin motorcycle engines when in use. Harley-Davidson competitors opposed the trade mark application, arguing that cruiser-style motorcycles of various brands use a single-crankpin V-twin engine which produce a similar sound. These objections were followed by litigation.
Harley eventually abandoned their litigation after 2000, but they sure as hell try as hard as they can to protect their distinct position in the motorcycle marketplace.
Don’t know how we can even have this conversation without bringing companys like ICON into the fold, who build Land Cruisers and Broncos that are not really Land Cruisers or Broncos. And I would happily take my Roxor in kit form. They are so simple I would have it assembled before I finish my six-pack 🙂
ICON ‘paid a license fee’ when they started.with the.original.product, even if all.they.use is the serial number of the donor vehicle. They don’t create a new legal vehicle identity.
Makes me appreciate the sanity that is the past all the more.
In 1958 when Triumph Motorcycles wanted to call their new twin carb 650cc mtorcycle the Bonneville, there was this little problem that in the US the Bonneville name had already been taken by Pontiac. Triumph Motorcycles approached GM regarding the matter. In a very short period of time, the two companies came to the agreement that the dual use of the name was acceptable as long as: 1. GM agreed to stay out of the motorcycle business, and, 2. Triumph agreed to stay out of the automobile business. Triumph cars, at this point, had been divorced from Triumph motorcycles and bicyces since 1936, and was a totally separate company.
In 2000, when Triumph wanted to reintroduce the new Bonneville, they again went back to GM. And in short order, the old deal was revived, and everybody was happy.
And both companies prospered with their respective Bonnevillles.
You’d think FCA and Mahindra could come to an equally equitable agreement, given that neither side is currently attempting to cross into the other’s market.
The Roxor is in competition with the Wrangler. It’s a subset of the.ca capabilities of the.Wrangler. While most people would not only buy a Roxor, people would buy a Roxor and a.road vehicle for the function of a Wrangler.
It’s silly to line for a fictional litigation free era in this case. The Jeep trademark is over 75 years old.
If you showed a picture of the Mahindra to 100 Americans, 99 would say it’s a Jeep. Nobody but FCA gets to build Jeeps unless they say so. It’s that simple.
Out of production means nothing. I don’t get to build ’65 Mustangs without permission just because Ford isn’t building them anymore.
Manufacturers of all sorts generally hate to pay license fees, they take a big bite from profits, and create all kinds of entanglements.
Some years ago I got to see the ITC at work in an action my employer was bringing against a non-US patent infringer. I was mighty impressed how hard they worked, the long hours they kept and how smart they were. After the case was over I got to ask the lead attorney why he worked for the government instead of some blue chip law firm. He said the ITC gets all the interesting cases.
“Nobody but FCA gets to build Jeeps unless they say so. It’s that simple.”
Except… long before FCA was a twinkle in Tony’s eye, Willys and Mahindra cut a deal.
Mahindra has been working continuously under a license agreement first agreed to with Willys. When I look at a modern Jeep, I see a Willys that has been fed steroids. When I looked a Mahindra Roxor, I see a Willys that has a diesel engine. I hope to one day purchase a Roxor because it more closely follows the function and soul of a Willys than a modern Wrangler. The Willys was a scout car, the Wrangler is an urban explorer with off road capabilities. The Roxor is a Willys with a harness. I would be very happy to find a way to make one street legal so that I could have the pleasure of driving an iconic Willys on road and off, without having to find an old WWII one and rebuilding it. I do not want a modern Wrangler even if it looks like a Roxor. So if Roxors become banned, I will have to look elsewhere for the kind of vehicle I would get next. But it wouldn’t be a Jeep by FCA. I am sure that I’m not the only one who appreciates having a timeless classic in as close to original form as possible.
Mahindra should change the front end to look like the M151 “not a Jeep”
and get a license from Ford. They would probably issue the license just to annoy FCA.
In China they are busy building “knock offs” of various luxury SUVs. Whether or not they could be exported to the U.S. and legally registered is another question. Not only would there be trademark infringement issues but there would have to be questions about their compliance with safety and emissions requirements. People expect their new cars to provide for their safety in a collision. I don’t think that Wrangler type Jeeps are as safe as a Volvo sedan, for example, and I think that blowback from people hurt in a Mahindra copy would hurt Jeep’s image and sales.
from a legal perspective, this is quite an interesting case as it discusses the reach of the „trade dress“ for technical products like cars.
The reason of being for the legal construct of the „trade dress“ is first and foremost the protection of the public in their belief of the origin of a product. If people trust they’re buying a „Jeep“ because of the look and feel and presentation of a product, they should not get a „Roxor“. The second reason of being is the protection of the goodwill and reputation of the producer. This is basically a mirror to the first reason, but focusing on the fact that competition should not exploit such goodwill in an unfair way.
Both reasons have their limits, though. When looking at this, one needs to keep in mind that all Intellectual Property constitutes a monopoly: If you own the trademark „Coca Cola“ no one is allowed to use that word for its products. That might be no issue if it is a highly original and unique name, but becomes a problem the more generic the trademark is. If you‘d own the trademark „car“ for passenger vehicles and could deny everybody else the use of the word „car“ for their vehicles (because of the monopoly in the word the trademark constitutes), everybody else producing passenger vehicles would be severely limited in competing on the market.
Applying the last paragraph on the concept of the „trade dress“, the legal issue at hand is the extend such monopoly can be granted into technical designs. At the end of the day, there are only so many ways how to design an open top, off road capable, four passenger vehicle. Should the one, obvious way be monopolized by FCA? When obviously, FCA has no other Intellectual Property – i.e. no patent, no copyright, no trademark – to rely on in this case (and probably for good reason)?
Personally, I think Mahindra should prevail. For at the end of the day, I think we have a closed catalogue of Intellectual Property at hand (i.e. copyrights, trademarks, patents, …) which are all there for precise reasons. Ignoring their limits by introducing an extensive use of the concept of „trade dress“ would be detrimental to free trade.
Ok, I’ll bit and chime in. Please check the U.S. Patent #2,278,450, April, 7,1942. This is a patent, OWNED by the US Government, and they allow use without payment. How similar it looks like a Wrangle? Mahindra should not pay FCA, anything. If so, WHY? Mahindra’s and FCA’s, goal are the same – PROFIT! If FCA build a small side by side like the Roxor, would FCA not owe Mahindra. This argument is going in circles IMO, this is a frivolous lawsuit. Through it out.
And I am NOT an attorney.
If FCA wants to cement there point, they need to publicly advise what are the, JEEP TRADE DRESS, items. This would show them in better light to the pubic.