Trade Mark Registration Certificate Translation

The certificate is needed abroad whenever the mark has to be protected beyond the border or becomes the subject of a commercial transaction. It is translated when registration is sought in a foreign country, when a licence or franchise agreement is drawn up, or when rights are asserted at customs against counterfeit goods. What such a translation carries across is not the name of the mark, but the scope of the protection.

Inside Türkiye the certificate does its work in the Turkish original; translation becomes necessary once the mark moves beyond the border. The document is rendered into the target language when registration is sought abroad, when a licence or franchise is set up with a foreign party, or when rights are asserted at customs against counterfeiting. Where a foreign mark is relied on in a transaction in Türkiye, the translation runs the other way. In every case what is translated is not the name of the sign but the goods and services that the protection covers, and the place of use also determines the layer of authentication required. If the same mark is protected in more than one country, a separate translation may be needed for each, and those translations are expected to be consistent with one another in the list of goods and services.

The Nice classification and the list of goods and services

Trade mark protection is never granted in the abstract; it is granted for particular classes of goods and services. That classification rests on the internationally recognised Nice system, in which every class has a heading and a list of the goods or services falling under it. This list is where the real weight of the translation lies: which products and services are protected must be carried across exactly and in full.

A frequent confusion is to treat the class heading and the list of goods and services as the same thing. The heading gives no more than a general frame; the actual scope of protection is set by the specific goods and services itemised under that class. Shortening the list, or making do with the heading alone, misrepresents how far the protection reaches.

Registration abroad under the Madrid Protocol

The route most often taken when a mark is to be protected in several countries is international registration through the World Intellectual Property Organization (WIPO) under the Madrid Protocol. In that system the application rests on the basic national registration and is directed to the countries selected. The registration number and the filing and protection dates on the certificate must match the data of the basic mark; these are numerical identifiers and are carried over untranslated.

Where a right of priority is claimed, the priority date and the basis of that claim must be reproduced accurately. Any confusion in these details opens an argument about the date from which the mark has in fact been protected. The link between the basic registration and the international one has to be kept consistent throughout the document.

The sign itself is not translated

A trade mark is a sign, and a sign is not translated. A word mark is left exactly as it stands; where a figurative element, a logo or a coloured arrangement is involved, it is described in square brackets. Translating a mark ‘by its meaning’ turns the protected sign into an entirely different one and leaves the document unusable.

The certificate also states the type of mark: it may be a word mark, a figurative mark, a combined mark or another type. That information is preserved in translation, because it shows what the protection has been granted for. In the same way, the proprietor’s trade name and address are carried across in full as identifying data.

The layer of authentication

Which layer of authentication a trade mark certificate calls for varies with the purpose it serves. In an international registration the language rules of WIPO and of the designated office govern; a licence agreement calls for sworn translation; court and customs proceedings may bring notarisation and an apostille into play. The table below summarises the typical situations, and the precise requirement should be confirmed against the rules of the office or authority concerned.

Renewals and assignment records

Trade mark protection endures, but it should not be taken for unlimited; it has to be renewed at set intervals, and events such as an assignment, a merger or a change of trade name are entered in the register. A certificate submitted abroad is expected to reflect the current status of the mark. An out-of-date certificate that fails to show an intervening assignment or renewal leaves the other side with questions.

Such changes appear on the document as additional annotations or as separate register entries, and every one of them is kept in the translation. After an assignment, giving the proprietor’s name accurately in both its former and its new form allows ownership to be traced without a break. Omitting dates or entry numbers destroys that traceability.

Keeping patents and trade marks apart

Although both certificates come from the same office, a patent and a trade mark protect quite different things: one secures the technical scope of an invention, the other the distinctiveness of a sign for particular goods and services. The distinction matters in translation, because with a trade mark the focus falls on the list of goods and services and the classes, while with a patent it falls on the technical scope of the claims.

The two may well be submitted together, in a company acquisition or an investment file for instance. In such cases each document has to be translated according to its own logic rather than pressed into a single mould. Rendering a trade mark specification in technical language, or a patent claim in the language of marketing, weakens both documents.

Common mistakes with trade mark certificates

• Taking the class heading for the whole list of goods and services and shortening the list.
• Translating a word mark and so destroying the identity of the sign.
• Altering the registration and protection dates or the application number.
• Passing over a figurative or logo mark without describing it.
• Reproducing the Nice class numbers in a different order.

Let us carry the scope of your mark across accurately

The value of a trade mark translation lies in carrying the scope of protection across in full, right down to the list of goods and services, and that calls for a sure grasp of the classification system. Once you send us the certificate we establish together what the destination country or the transaction expects, and transfer the list and class details with care. You can see other intellectual property documents in our document guide and the breadth of our work on the translation services page, and you can send your document through the quotation form.

This page sets out the general framework; whether an apostille or notarisation is required depends on the institution you apply to. We recommend following current practice through official announcements.