Fiat Chrysler tells U.S. appeals court redesigned 4x4s still copy Jeep design

(Reuters) - A U.S. appeals court on Wednesday questioned Fiat Chrysler's attempt to block Indian vehicle maker Mahindra & Mahindra Ltd's U.S. sales of its Roxor line of 4x4s, which Fiat says copies aspects of its Jeep design.

A Detroit federal court had previously blocked Mahindra from selling pre-2020 Roxor models, but found redesigned post-2020 versions of the off-road-only vehicle didn't infringe Fiat Chrysler's trademark rights.

Fiat Chrysler asked the court to revive its bid to ban the new Roxors, arguing they didn't keep a "safe distance" from the trademark-protected design of Jeep's Wranglers. The company's lawyer Frank Cimino of Venable said during the hearing that Mahindra should have been subject to the more stringent safe-distance standard because it was already a known infringer.

The district court instead relied on a non-infringement ruling from the U.S. International Trade Commission that used a different standard, Cimino argued.

U.S. Circuit Judge Richard Suhrheinrich questioned whether the Roxors were likely to cause consumer confusion, a requirement to prove trademark infringement.

"The marketing in this is done by the dealerships," Suhrheinrich said. "[People] go to Chrysler Jeep to buy a Jeep, then they go to the other company to buy that car. So how are they confused in the marketplace?"

Cimino said Fiat Chrysler had already proven marketplace confusionbecause the companies have "substantial overlap in the off-road market."

Mahindra's attorney Mary Hyde of Honigman told the panel there was no precedent that required courts to consider the safe distance rule, and that making it a "standard of universal application" would be a "fundamental and unwarranted shift in trademark law."

Hyde said the standard is usually applied to bad actors that make "tiny incremental changes" to infringing products, and noted that Mahindra's new design had already been cleared by other tribunals.

Circuit Judge Jane Stranch asked Hyde if a survey cited by Fiat Chrysler finding 19% of respondents incorrectly believed the new Roxor was associated with Jeep should "play a more prominent role" in the district court's analysis.

Circuit Judge Helene White was also on the panel.

The case is Mahindra & Mahindra Ltd v. FCA US LLC, 6th U.S. Circuit Court of Appeals, No. 21-2605.

For Mahindra: Mary Hyde of Honigman

For FCA US: Frank Cimino of Venable

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U.S. regulator modifies ban to allow Mahindra to sell new Roxor models in Jeep case

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