“FOSTER” v.s “NOSTER”: Is there similarity?

On April 15, 2019, CHIESI FARMACEUTICI S.P.A. (“Chiesi”), the Italian pharmaceutical company, filed opposition against NITTO PHARMACEUTICAL INDUSTRIES, LTD. (“Nitto”), alleging that registration of Nitto’s “NOSTER” trademark (Reg. No. 01966235, see below) would cause confusion with Chiesi’s “FOSTER” trademark (Reg. No. 01339137, also see below), which is the brand for its asthma medicine.  

Nitto’s “NOSTER” was filed on April 30, 2018, and granted on January 16, 2019, designated for use in class 1, 3, 5, 16, 29, 30, and 32; and services in class 35, 42, and 44. Chiesi’s opposition focused on goods in class 5, including medicine, medical test paper, medical adhesive tape, sanitary mask, medical capsule, bandages, cotton swabs, dietary foods for medical use, baby food, and nutritional supplement.

 

On January 29, 2021, Taiwan’s IP Office ruled in Nitto’s favor, determining that “NOSTER” is not similar with “FOSTER” and would not cause confusion among the relevant public:

 

1.    Chiesi argued that “NOSTER” shall be cancelled based on Article 30.1.10 of Trademark Law, which provides that a mark shall not be registered if it is similar with a senior mark that is applied for use in similar goods or services, so that there exists likelihood of confusion among the relevant public.

2.    Here, by examining Chiesi’s “FOSTER” and Nitto’s “NOSTER”, TIPO found the two not similar with each other. Unlike “FOSTER”, which is a word with ordinary meaning (i.e., to support or to bring up with care), Nitto’s “NOSTER” has no ordinary meaning. Besides, the pronunciation of the two is also distinguishable due to the difference in their initial letters (“F” v. “N”. ) Thus, TIPO posited that “NOSTER” is dissimilar with “FOSTER”.

3.    As for the similarity in the designated goods, TIPO noted that “FOSTER” is applied for use in pharmaceuticals for human. In this respect, TIPO found some of the goods designated by “NOSTER”, such as “medicine, medical test paper, and medical capsule”, are similar with those designated by “FOSTER”. As for other designated goods like “sanitary mask, cotton swab, and baby food”, TIPO was of the view that they are products for personal hygiene or for infant feeding, which bear little similarity with the goods designated by Chiesi’s “FOSTER”.

4.    Lastly, TIPO found that both trademarks are distinctive, and are actually used in different kinds of products. More specifically, “FOSTER” represents the brand name of Chiesi’s asthma medicine, which is prescriptive medicine adopted by medical centers and hospitals in Taiwan, while Nitto’s “NOSTER” is used for materials of lactic acid bacteria products for metabolism purpose. In view of the difference in product nature, TIPO was further convinced that registration of “NOSTER” will not cause confusion with Chiesi’s “FOSTER”.

Based on the above reasons, TIPO sided with Nitto and denied Chiesi’s trademark opposition.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4STZlQU93QXBqTzVMZVJSb1czUEttQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true