Trademark Office finds ORIGINAL SMOKE original

The Chilean Trademark Office (TO) has rejected the opposition to the registration of the mark ORIGINAL SMOKE for cigarettes and tobacco products, finding that the mark was not generic for the goods in question and was unlikely to be confused with the prior registered mark COPIHUE SMOKER (Case 602,973).

British American Tobacco (Brands) Inc (BAT), a division of the producer of, among other things, Lucky Strike and Dunhill branded cigarettes, filed an application to register ORIGINAL SMOKE as a figurative trademark for cigarettes and tobacco products in Class 34 of the Nice Classification. Compañía Chilena de Fósforos SA opposed the application on the basis of (i) the generic character of BAT's mark in relation to the products for which registration was sought, and (ii) its prior registration for COPIHUE SMOKER also in Class 34.

The TO upheld BAT's registration. It considered that despite the fact that the marks incorporated either the word 'smoke' or 'smoker', there were enough differences between them to prevent any likelihood of confusion, in particular because ORIGINAL SMOKE was a figurative mark while COPIHUE SMOKER was a word mark. The TO also held that the combination of the words 'original' and 'smoke', while evocative, was not generic nor descriptive for goods in Class 34.

Accordingly, the TO rejected the opposition but limited the protection to the combination of the words 'original' and 'smoke', not to the words alone.

Luis Felipe Claro Swinburn, Claro y Cia, Santiago