Mahindra files suit against FCA

This one is actually filed in court, not just a complaint.

A taste from the filing:
Fiat’s filing constitutes a material breach of the contract, which has caused Mahindra substantial monetary and irreparable harm. Among other relief, Mahindra requests a preliminary injunction requiring Fiat to withdraw its ITC complaint immediately, and a declaration that the ROXOR does not violate any Fiat intellectual property.

https://www.courthousenews.com/wp-content/uploads/2018/08/MahindraJeep.pdf

 

Comments

sandyx
#2
By this Complaint, plaintiffs Mahindra and Mahindra Ltd. (“M&M”) and its affiliate Mahindra Automotive North America, Inc. and its subsidiaries (“MANA”) (together, “Mahindra”) seek an injunction to prevent FCA US LLC (“Fiat”) from asserting trademark and trade dress claims against MANA’s new ROXOR off-road-only vehicle, and for a declaration that the ROXOR does not infringe Fiat’s claimed intellectual property.

2. Fiat claims trademark rights in a vehicle grille design with seven parallel vertical slots. In 2009, the parties signed a contract memorializing Fiat’s agreement that a new M&M grille design with certain distinctive elements that were very different from the Fiat seven-slot grille (the “Approved Grille Design”) did not infringe Fiat’s claimed trademark rights. The contract also expressly stated that Fiat would not assert any intellectual property infringement claims against vehicles made or sold by M&M or any of its affiliates, provided the vehicles used the Approved Grille Design.

3. MANA’s new ROXOR uses the Approved Grille Design.

(Eventually, M&M agreed to incur the costs of a redesign and change to the distinctive Approved Grille Design. The new design used four and a half
angled vertical slots with the “half” slot applied to a raised center panel and the federally-registered Mahindra MILLENNIUM logo trademark above it)

fgh-jpg.977


4. Despite the parties’ contract, Fiat recently filed a complaint against Mahindra in the International Trade Commission (“ITC”) making trademark and trade dress claims against the ROXOR—claims that it expressly agreed never to assert. Fiat’s bad faith in filing the ITC action is made plain by the fact that its primary claim seeks to ban the importation of the ROXOR grille notwithstanding the fact that the ROXOR grille is not imported. It was designed in Michigan; it is made in Michigan by a third-party manufacturer; and is used in MANA’s Michigan-based ROXOR manufacturing process.

5. Fiat’s filing constitutes a material breach of the contract, which has caused Mahindra substantial monetary and irreparable harm. Among other relief, Mahindra requests a preliminary injunction requiring Fiat to withdraw its ITC complaint immediately, and a declaration that the ROXOR does not violate any Fiat intellectual property.
The parties memorialized their agreement in a written contract. The contract states in relevant part:

Chrysler consents to the use and incorporation of the grille design shown in Exhibit A (hereinafter the “Approved Grille Design”) in vehicles sold and advertised in the United States by Mahindra and/or its affiliates and authorized dealers. Chrysler agrees and warrants that it will not assert against Mahindra, its affiliates, authorized dealers, or customers, or anyone else, 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 orusing the Approved Grille Design.
And it gets interesting!

Fiat’s trademark registrations for an automobile grille with seven vertical slots (U.S. Regis. Nos. 2,862,487; 2,161,779; 2,794,553; and 4,043,984) are invalid. The vertical slots are functional and cannot act as an indicator of source. Among other evidence of functionality, Fiat’s predecessors filed utility patents expressly touting the seven slotted grille design as functional. See, e.g., U.S. Patent No. 2,378,504.

43. Fiat’s predecessors also filed utility patents expressly touting the overall design of the historic JEEP as functional. See, e.g., U.S. Patent No. 2,278,450. As a result, its registered logo trademark, U.S. Regis. No. 4,272,873, is invalid and its unregistered claimed common law trade dress is invalid. Moreover, Fiat does not assert that Mahindra uses any two dimensional trademark incorporating the sillouette of an automobile, or that any of Mahindra’s trademarks are confusingly similar to the ‘873 Mark. Thus, Mahindra cannot and does not infringe the ‘873 Mark.

44. Fiat’s trademark registrations for an automobile grille with seven vertical slots (U.S. Regis. Nos. 2,862,487; 2,161,779; 2,794,553; and 4,043,984), registered logo trademark (U.S. Regis. No. 4,272,873), and its unregistered claimed common law trade dress are also invalid because they are generic and incapable of indicating source. Upon information and belief, numerous third parties use the designs or substantially similar designs to generically indicate a “4x4” or “off-road” vehicle without reference to source.

45. Fiat’s registered logo trademark, U.S. Regis. No. 4,272,873, and unregistered common law trade dress are also invalid because they lack secondary meaning. Consumers do not understand the primary purpose of the claimed mark and/or trade dress to indicate Jeep as source because Fiat is not the substantially exclusive user of the claimed designs. Upon information and belief, numerous third parties use the designs or substantially similar designs to either identify themselves or to indicate a generic “4x4” or “off-road” vehicle without reference to source.

46. Fiat’s registered logo trademark, U.S. Regis. No. 4,272,873, and unregistered common law trade dress are also invalid because they have been abandoned due to non-use and/or acquiesence. Upon information and belief, Fiat’s claimed trademarks and trade dress are no longer used by Fiat and have not been used for more than three years.
 
General
#3
After reviewing the arguments in FCA's USITC complaint as well as MANA's court injunction, I think Mahindra has a slam dunk. Their contract from 2009 completely dissolves Jeep's complaint. Mahindra goes further to refute Jeep's secondary claims to trade dress infringement. Unless Jeep has something magical up their sleeve, I'd predict that Mahindra is going to sweep the floor with them in court. I hope they win the counter suit as well, claiming Jeep's whimsical ITC complaint caused substantial and irreparable harm to Roxor. Win for us!
 
Bister
#4
In both the original complaint and this law suit, I see a "throw everything at (both sides of) the wall and see if something sticks" thingy. Now that is my non-proffesional arm chair lawyer opinion. lol

I like some of that trade dress stuff they claimed also General.

I like the way Mahindra asks for 'trial by jury', looks like they are going for the 'if you find against us, all these people will be out of work' play. I doubt if it ever makes it to court. But I've been known to be wrong....a lot sometimes. lol
 
jrobz23
#8
HAHA the Popenwagon!

I see flat sides FCA.. better get your lawyers warmed up and sue yourself.
 
jrobz23
#9
Message to FCA: If your offering is superior, you don't fear 'competition'. You don't sue your 'competitors' when you actually believe you have a superior offering. You really don't sue offerings in fringe markets, you don't operate in, when you believe you have a strong offering.

Their actions tell you all you need to know about how they feel their own offerings stack up.
 
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