Fiat Chrysler Automobiles Aims to Stop Sales of “Jeep-Like” Vehicle in US
The ‘Willys MB’ truck (also known as a “Jeep”) is a well-known vehicle manufactured by Fiat Chrysler Automobiles (FCA), first manufactured in 1941.
FCA has filed a complaint with the U.S. International Trade Commission, requesting a ban on a “nearly identical copy” of it’s Jeep vehicle by the Indian manufacturer, Mahindra known as the ‘Roxor’, on the basis of trade mark infringement and copying of the Jeep’s trade dress.
The US concept of trade dress allows elements of product design (which do not have to be registered) to be protected. The complaint alleges that the following (among other elements are protected);
“(i) A boxy body shape with flat appearing vertical side and rear body panels ending at about the same height as the hood;
(ii) Substantially flat hood with curved side edges that tapers to be narrower at the front;”
The complaint argues that Mahindra have “engaged in unlawful acts...through their unlicensed importation, sale for importation, or sale after importation of... products that infringe and dilute FCA’s distinctive Jeep vehicle trade dress.” This unapproved vehicle is likely to “deceive potential consumers and the public” about the connection between the Roxor vehicle and the Jeep.
Mahindra has called the complaint “without merit” and they refer to a “historic relationship and agreements with FCA and its predecessors that go back seventy years”. According to Mahindra, the two manufacturers have been co-existing for over 25 years in India and in many other countries.
In the UK, trade dress is protected as “get up” and the FCA would have to rely on a passing off claim. To succeed in a passing off claim, FCA would have to prove the following;
- Goodwill – that the Jeep brand has a reputation built up through trade. The Jeep brand is extremely well known (with FCA spending hundreds of millions on advertising as alleged in the complaint), and the Willys MB truck is extremely iconic.
- Misrepresentation – a customer must be deceived into believing that they are purchasing a Jeep product. This will be harder to prove given that there appear to be numerous differences in the design of the two vehicles – namely the grill designs (the Mahindra grill is smaller with less cutouts than the Jeep), the shape of the hood (the Mahindra hood is more rounded) and the differing shapes of the door cutouts.
- Damage – that the misrepresentation by Mahindra cause damage to Jeep (and cause loss of sales).
FCA may find it difficult to argue such a case in the UK following the Moroccanoil Israel Ltd v Aldi Stores Ltd  EWHC 1686 (29 May 2014) as set out in our article earlier this week (/updates/news/2018/08/inspiration-or-copying-aldi-in-the-news-again/).
Due to this in the UK we would always advise clients to register a new product as a design which protects the appearance, physical shape, configuration and decoration on a product.
In the example, above a car manufacturer could register the design of the car together with the design of individual components. The enables to the design owner to prevent competitors from marketing products which produce the same overall impression on an “informed user” of the product.
The full complaint can be viewed here.