XL vs. XT | The XL Factor
by Eran Soroker
Can the famous energy drink company XL prevent the sale of energy drinks sold under the brand “XT”? This was the subject of legal proceedings held in Israel.
Background: Soroker Agmon Nordman, Advocates & Patent Attorneys represent XL in Israel.
XL is the leading entity in the energy drinks market in Israel. XL energy drinks are sold and distributed in many countries worldwide and are the leading energy drink brand in Israel.
XL has spent significant resources in developing, maintaining and advertising XL products. XL’s investment and efforts were successful. Over the years, XL has gained considerable goodwill and has become the leading brand of energy drinks in Israel. XL also owns various trademarks and trademark applications in Israel such as the XL Logo.
Over the last few months, XL discovered that a large quantity of energy drinks are sold in Israel under the brand “XT”. The resemblance between the original XL cans and the XT cans was striking, as shown in the photo above, taken in one of the major supermarket chains in Israel.
XL filed a lawsuit, through Eran Soroker and Robert Dorneanu from our litigation team, seeking a permanent injunction and a compensation based on the torts of trademark infringement, passing off and unjust enrichment.
The serving of the lawsuit on Defendants proved to be challenging. Several messengers tried but failed to serve Defendants with lawsuit. The messengers couldn’t find the defendants at the addresses listed with the Israeli Companies Registrar. Further, the Defendants could not be reached by the phone number listed on the XT Cans. Finally, an intern from our office succeeded in locating and serving Defendants in a major supermarket branch under one of the defendants’ management.
As Defendants did not file a statement of Defense in due time and ignored the legal proceedings, XL filed a motion for a Judgment by default, which was granted by the Central District Court.
A few weeks later, Defendants filed a motion to cancel the Judgment and argued they were not served with the lawsuit, as required by law. Defendants claimed that they did not pay attention to the documents received during the busy business period of the Jewish holidays.
According to Israeli case law, Israeli courts usually cancel Judgments granted by default. So, when then the Court set a hearing for the motion to cancel the Judgment, our legal team prepared itself for the hearing, knowing that the chances of the judgment not to be cancelled are not high.
The hearing, which took place in the Central District Court, was intense. At the end of the hearing, we managed to receive a favorable consented Judgement against the defendants replacing the previous Judgment.
The Court handed a permanent injunction against all future import or sales of the XT cans. The Court further ordered that Defendants are to destroy all cans in their possession. If Defendants will not comply with their obligations they are to pay XL the sum of 500,000 NIS above any other compensation. The Court also ordered Defendants to pay 15,000 NIS as expenses.
XL Energy International Corp. Vs. S.K Sahar and Zachi Coperli. (Central District Court 47541-09-17, January 11, 2018