UPDATE: Seth alert me to On The Rox Fabrication and their Facebook page. The business creates custom parts for the Roxor that make it look more jeep-like. Here’s a pic showing a Jeep and a Roxor. At a quick glance, can you spot the Roxor?
The answer is that neither are jeeps (okay, so it was a misleading question). Both are Roxors.
Below are some of the parts made by On the Rox. I will be interested to see Jeep’s reaction one its legal staff becomes aware of the On The Rox products.
Original Post August 7, 2018: This post covered Jeep’s Filing with the FTC against Mahindra, the creator of the Roxor.
As many of you know, the Roxor is Mahindra’s newest jeep-like vehicle. It’s a non-highway vehicle capable of a max speed of 45 mph. It’s best thought of as a hybrid jeep/atv(aka side by side). When they were first introduced, many folks wondered how Mahindra could build and sell these in the US. And, furthermore, why wasn’t FCA (Jeep’s parent company) fighting this.
It seems FCA was simply biding it’s time and thinking about how to respond, because just the other day FCA filed a complaint with the FTC regarding the sale of the Roxor in the US. The core of the complaint rests on two principles.
- According to the filing, “Most significantly, [Mahindra & Mahindra] exacerbate likely confusion by promoting their vehicle as bearing the Jeep-IP that FCA owns, touting their vehicle as being ‘modeled’ on the … Jeep”. In other words, Jeep is claiming the Roxor looks too jeep-like. With this argument, FCA is relying on the concept of Trade Dress, though I’ve found no evidence that FCA ever trademarked a specific ‘dress’. Of course, FCA has trademarked JEEP and the 7 slot grille, but the Roxor circumvents those. I suspect the argument will come down to whether a judge or the FTC believe that the Roxor dilutes the Jeep brand. Given the number of news outlets that have described the Roxor as a jeep-like vehicle, there may be a solid case for that.
- While Mahindra is one of the oldest licensees (since 1947), that license doesn’t give Mahindra the right to sell jeep-like vehicles in the US. Since Mahindra doesn’t own the Jeep IP (some folks on Facebook have made, surprise-surprise, many erroneous claims regarding the Mahindra-Jeep contract, such as that Mahindra “owns” the rights to build and sell jeeps … a license does not equal ownership … in the end, having no access to the contract, we don’t really know the specific details),Jeep feels it is within its rights to put a stop to the Roxors. No doubt this argument will come down to the specifics of the contract(s). Is Mahindra limited from selling only highway vehicles in the US that look like jeeps or are they banned from selling anything jeep-like in the US? Time will tell ….
It’s interesting to me that Jeep didn’t file a lawsuit against Mahindra for violating the terms of its contract. So, either it doesn’t violate those terms OR starting with the FTC is a simpler, cheaper option for now.
Mahindra did offer a response, claiming its “actions, products and product distribution (including Roxor) both honor the legacy of the relationship and the terms of our agreements with FCA.” This is a pretty boilerplate response. To me, it also suggests they didn’t try to work with FCA when planning the Roxor, but instead were hoping for forgiveness or expected protection vis-a-vis it’s license. Still, I’d be surprised if there were terms that allowed Mahindra to sell jeeps or jeep-like vehicles in the US.
LINKS:
- Law360 article (have to sign up to view): https://www.law360.com/automotive/articles/1070073/fiat-chrysler-says-indian-look-alike-is-ripping-off-jeep
- Jalopnik article on filing: https://jalopnik.com/jeep-is-trying-to-keep-the-mahindra-roxor-from-going-on-1828080605
- Australian Take on the Issue: https://www.motoring.com.au/fca-wants-indian-jeep-knock-off-banned-113947/
- Bloomberg: https://www.bloomberg.com/news/articles/2018-08-02/fiat-chrysler-looking-to-block-mahindra-jeep-knock-off-in-u-s
- Jalopnik article from the spring of 2018: https://jalopnik.com/this-is-why-mahindra-can-build-tiny-jeeps-1823472625
This is interesting and will be something to follow to see what happens. Clearly Mahindra was aware of the problems which is why they made the grill the way they did.
this is interesting BUT IS NOT A LIBRARY !!! — things like this show that a WILLYS JEEP is still the MARK OF EXCELLENCE !!! — capable of offroad travel or speeding down an interstate highway — its all you need — sorry MAHINDRA AND JOHN DEERE AND POLARIS AND HONDA !!! ( LOSERS )
Actually, eWillys is very much a library. It’s a collection of information, loosely organized, whose intent is to stimulate (entertain) and educate readers. In fact, that’s the whole point!! 🙂
Definition of a Library from the American Library Association:
“A library is a collection of resources in a variety of formats that is (1) organized by information professionals or other experts who (2) provide convenient physical, digital, bibliographic, or intellectual access and (3) offer targeted services and programs (4) with the mission of educating, informing, or entertaining a variety of audiences (5) and the goal of stimulating individual learning and advancing society as a whole.””
the ” this is not a library ” phrase is from THE SIMPSONS — HOMER is reading magazines at the 7/11 and APU the INDIAN owner says … you got it …
Well Dave, I for one VALUE the EWILLYS Library, a wealth of information found nowhere else but here. This is at least one thing we both agree on. In relation to the above Mahindra ROXOR vehicle, the design is a deliberate effort to capitalize on the Iconic JEEP design.
Legals aside , see that Holy Toledo ad, the CJ5 , real jeep – when the now Fiat abandoned the jeep sized jeep for the obese Jeep badged vehicles on their lots today the vaccuum left went begging for a CJ5 -Suzuki/Chevrolet Geo filled somewhat Toyota F40 did, but other then restore a hulk you can’t get a real jeep. I hope Mahindra is successful – at least ranchers that don’t need highway registration have a jeep alternative to a gator
It will be interesting to see how it works out. On the Jalopnik post about this it showed fca’s example of the trade dress infringement. They used a cj7 as the example. Kind of telling that they had to get a vehicle out of production for 30 years as their example, but I guess that it what it most resembles. Personally I hope Mahindra wins.
I don’t understand why Mahindra didn’t go to jeep to try to get these licensed and branded as a jeep product. Seems like that would have been a win for everybody.
Also, I’d like to echo that I appreciate the library here!
Just want to follow this post.
A perfect example of licensing and branding that worked to both party’s satisfaction is Vespa the Italian scooter manufacturer, had a licensing agreement with LMC of India to sell and manufacture the Vespa PX150 scooter as the Stella PX150. LMC even sold it in America till the end of production in 2017. I don’t see any reason why Mahindra could not have worked out a similar agreement. After all, you have Willys licensed replacement parts with the Willys trademark stamped name, made in Asia. sold in America.
It’s entirely possible that I am one of the only people on the planet who did not watch the Simpsons, so I would have most definitely missed that Library reference (my apologies for that). I had nothing against the show (seemed to offer good critiques of society), just never got around to it.
I watched the simpsons at least 3 times — cartoons on tv are — BORING
Yeah, it’s too bad Mahindra couldn’t have structured this so both benefit. Heck, there are Jeep-branded baby strollers.
Also, while I’m wishing, it’s too bad there isn’t a low volume exception that allows for reproduction of Jeep/Willys parts without having to get a full licensing agreement. I’m imagining “licensing lite” or something like that. While brands do need to protect their intellectual property, is a run of a few hundred “Willys” floor mats, bumpers, or gauges gonna harm the mothership?
This is more of a Jeep than what FCA makes today. If Jeep is concerned with Mahindra eating into its sales, why doesn’t it offer a Jeep ATV based on the CJ-5?
Seth,
My thoughts are that this is less about eating into sales and more about protecting intellectual property rights. Given Jeep Corp’s size, it’s not clear to me that the Roxor market is large enough to warrant Jeep’s involvement. Given Jeep set a record for Jeep sales in March of 2018 (almost selling 100,000 jeeps https://www.cnbc.com/2018/04/03/jeep-wranglers-just-set-an-all-time-sales-record.html), the Roxor isn’t much of a sales opportunity. But, Jeep does have to defend their IP and that’s what I *think* they are doing.
My feeling is that Jeep might benefit from have a subsidiary that specializes in ATVs. It could be a marketing boost for their brand. After all, they sponsor all kinds of offroad events. But, if Jeep (or a subsidiary) did build them, does it make sense to sell ATVs through dealerships or through ATV places or through their own ATV dealer network? Would the ATVs really be “Jeep”s and should they be labeled as such? I think what appears simple at first could grow complex quickly.
There are so many unknowns about this non-lawsuit.
I’ve been wondering if this is a backdoor production deal, and there needs to be posturing so that when other companies come forward with their own “side by sides” the next company isn’t just pointing out, “Mahindra did the same thing in 2018 and nobody said a word!” Could it be possible that FCA does approve of the Roxor through some business agreement? It would stand to reason that they need to file the IP complaint so that future companies without the history Mahindra has with Jeep can be held accountable for IP infringement?
This is from a 2009 agreement between Mahindra & FCA. It says Roxor could be sold in USA.
“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 or using the Approved Grille Design.”
**Approved Grille Design/Exhibit A = “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”, aka the one on Roxor.
It was only a matter of time before someone got into the game of making aftermarket parts for these…should be a huge market.
Great points guys. I’m enjoying this discussion.
Jeff: I suppose that’s altogether possible. However, if the FTC disagrees with the filing, does that open the door to others? Based San’s comment, it does seem that there were negotiations about the Roxor.
San: That agreement seems pretty clear, so it would seem the grille isn’t the sticking point in all this. Maybe that’s why they aren’t filing a trademark infringement, because the grille isn’t what they are upset about. Rather, maybe it is the body design and the rest of the styling that took Jeep by surprise? Since Jeep doesn’t have a trademark on the style, their recourse is the FTC filing.
It hasn’t hit the general news yet, but it seems Mahindra filed a lawsuit against FCA last Thursday: https://teamroxor.com/threads/mahindra-files-suit-against-fca.403/
Yep, Mahindra filed a lawsuit against FCA last Thursday 8/23. It looks like Mahindra really has a current license agreement with FCA that lets them produce and sell the Roxor (or any Jeep-like vehicle they choose) in the US. It was drawn up in 2009 with Chrysler, before the Fiat merger in 2014. The agreement transfered under FCA. One has to wonder if FCA lawyers goofed and forgot about it. Oops.
There is a rumor that today FCA withdrew their complaint with the ITC. I am waiting for ITC to update their 337 status page tomorrow to confirm that rumor.
Lawsuit filing direct link:
https://www.courthousenews.com/wp-content/uploads/2018/08/MahindraJeep.pdf
I’M WATCHING THE BURNING MAN LIVE FEED FROM THE BLACK ROCK DESERT — STILL NO SIGN OF ” BIG MUTANT JEEP ” — ITS BEEN AWFUL THERE — THE BUREAU OF INDIAN AFFAIRS POLICE HAVE BEEN SHAKING DOWN THE BURNERS FOR DRUGS AND CONTRABAND — YESTERDAY HIGH WINDS CLOSED THE GATES TO THE CITY — PEOPLE WERE TOLD TO RETURN TO RENO — THEN THE FOREST FIRE SMOKE AND PLAYA DUST — WHITEOUT IN AUGUST — THIS IS WHY ITS CALLED BURNING MAN — CAUSTIC SODA PLAYA DUST IMBEDDED IN YOUR AIRWAYS AND CLOGGING EVERY CREVICE OF YOUR MUTANT JEEP — MY BUDDY IS FLYING HIS PC-12 PILATUS TO 88NV BLACK ROCK AIRPORT — HAPPY LANDINGS !!
I’ve been seeing semi-loads of these in my area of suburban Detroit. They really are good-looking vehicles! When I saw a load of them for the first time last week, I couldn’t figure out what they were, and had to search the name. They may be a knock-off Willys, but they sure aren’t cheap-around $15,000 from what I see.
My neighbor just bought a new John Deere side by side, 4×4, 30 horse, with a cab, a/c and heat for $27,000, so 15k does not seem bad to me.