Are you a car addict?? Want to read something about cars?? Then you are at the right place…This post covers the Trade dress infringement suit filed by multi-national car brand Fiat Chryslers against Mahindra for the infringement of its Fiat JEEP’s classy grill dress!!
Tussle Between Fiat Chrysler and Mahindra
Fiat Chrysler is a Netherlands based automotive multinational company which has a subsidiary in the U.S. which is involved in the manufacturing of car with classy and unique designs. Mahindra and Mahindra (M&M) on the other hand, is an India based automotive major having a subsidiary in the U.S as well as which is engaged in the manufacturing of off-road-only vehicles having unique touchstones and designs. The tussle between Mahindra and Fiat arose in the year 2008 when M&M designed its first heavy vehicle named “SCORPIO” bearing a unique dress design that included a grille with seven vertical slots. Fiat objected to the design of SCORPIO and claimed that it had a “Trademark” on the grill with seven vertical slots. We will discuss later in the post on how Fiat Confused trademark and trade dress.
Till late 2009, a long negotiation between M&M and Fiat took place relating to the design of SCORPIO, after which, Mahindra finally agreed to redesign its pre-iterated SCORPIO and used four and a half angled vertical slots with the “half” slot applied to a raised centre panel with federally-registered Mahindra MILLENNIUM logo as a trademark. In place of this effort, Fiat agreed with Mahindra that it shall not bring any suit for Intellectual Property infringement against Mahindra for the use of its unique slots in forth-coming trade settings.
In 2015, MANA a US-based subsidiary of M&M decided to design and manufacture an off-road-only vehicle for sale in the United States. Given Fiat’s historic (and overly aggressive) design concerns, MANA’s designers were instructed to use the Approved Grille Design on the new off-road-only vehicles, and named the vehicle “ROXOR”. As manufactured, advertised, and sold, the ROXOR is THAR’s American cousin which incorporates the Approved Grille Design.
Later in the year 2018, Fiat again filed a complaint before International Trade Commission alleging that the Mahindra’s new ROXOR vehicle infringes Fiat’s JEEP grille designs. Fiat alleged that it is a copy of its Willys JEEP and the design elements of Mahindra’s product infringes some key design elements of the Jeep and infringes its four trademarks in a grille design with seven vertical slots. And with this, the dispute arose again between Mahindra and Fiat-for its grille design. Fiat has asserted this claim before the commission in demand to seek exclusion order banning the imports of ROXOR grill design and hence, Fiat violated the T&C of the agreement entered with Mahindra in the year 2009.
The question now before the International Trade Commission was whether there is an infringement of trademark over Fiat’s unique grille design that is applied by ROXOR?
Generally, Trademark covers all types of marks that include names, word, signs, slogans etc. that distinguishes the goods and services of one proprietor from another. And concerning the present case, the reviews of the ROXOR have been overwhelmingly positive. For example, Auto Week (a regional magazine) described the ROXOR as “extremely fun to drive and quite capable vehicle. This justifies the point that every person who creates a mark is rightly entitled to the exploitation of the same. Hence, such copying of the mark by another person is never entertained by trademark owners.
In deciding the case, the ITC identified that the case needed to be looked at from two perspectives, one involving “trade dress” and another involving the “trademark”. A trade dress refers to the look-and-dress of product that distinguishes it from its competitors. It consists of the unique characteristics that make a product stand apart and is identified with that product by the public. For example: – FCA sees the Jeep Wrangler’s boxy body shape, front grille and round headlights as distinct trade dress to the brand. The ITC also considered the fact that prima facie the Fiat was barred from taking any Intellectual Property infringement action against Mahindra concerning the grill design in pursuance of an agreement entered by them in the year 2009. Hence, it cannot raise any objection to the use of grill design by M&M.
The ITC, in accordance with the decision of its Administrative Judge, finally observed that there is a difference between what we call as a trademark and a trade dress. A trade dress refers to the look of the product. And what Fiat claimed before the ITC was the violation of its JEEP’s trademark and not the trade dress. The ITC therefore upheld the decision of the Administrative judge after preliminary investigations, in its order dated 11th June 2020[1]and held that M&M ROXOR does not violate any trademark of Fiat but it does violate Fiat’s trade dress. Accordingly, it has passed an exclusion order prohibiting the imports of ROXOR and a cease-desist order prohibiting the sale of already imported ROXOR parts in the United States. Hence, with the binding order of ITC, the long fought battle between Mahindra and Fiat came to an end.
[1] https://www.usitc.gov/secretary/fed_reg_notices/337/337_1132_notice_06112020sgl.pdf
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