But it also has a guaranteed downside. Many applicants used to let applications lapse by simply not paying the grant fee, often after facing an opposition, a change in business strategy or simply lack of interest. Now, those applications will move forward automatically, creating more unused registrations (“deadwood”) that can block third parties. Considering Brazil is seeing a spike in TM filings over the years, with roughly half a million new applications being filed annually, this can become quite problematic.
In addition, the reform has brought significant change to the official fees, creating a gap between applications using the BPTO’s pre-approved list of goods and services and those using a free-text specification:
- Pre-approved list: R$ 880 per class (≈ US$ 165). Total cost is lower than before, since the grant fee is gone.
- Free-text list: R$ 1,720 per class (≈ US$ 325). A much higher fee, reflecting the extra work needed by examiners.
Other relevant changes that are noteworthy:
- Oppositions and appeals: More expensive, but a simplified opposition option has been added for clear conflicts at a lower cost.
- Renewals: Adjusted but essentially stable (R$ 1,000 ≈ US$ 190 per class).
Because fees for TM applications are now paid in full at the start and are non-refundable, clearance searches and careful specification drafting are more important than ever.
In terms of the Madrid Protocol and how it now compared to local filings, from the same date, Madrid designations for Brazil will also follow a single up-front fee: CHF 251 per class (≈ US$ 320). The previous two-part fee is no longer available.
For global filings, Madrid can still be useful. But for Brazil specifically, direct filings may warrant further consideration. This is because they allow use of the pre-approved list (to keep costs down), make it easier to use the new fast-track procedures, and avoid the risk of losing protection in Brazil if the basic mark in the home country is cancelled.
In any event, understanding the BPTO’s pre-approved list of goods and services is crucial under the new rules, since the fee structure heavily favors its use. The list is based on the Nice Classification, supplemented by Brazil’s own auxiliary terms.
In general:
- High feasibility for adaptation: If your products or services are standard within your industry, it is usually possible to adapt custom wording to match terms already available. This lowers costs and speeds up examination.
- Lower feasibility for adaptation: If your offering is very innovative or niche, existing terms may be too broad. In these cases, you need to balance the benefits of a precise free-text description against the much higher cost.
For example, in Class 9 (products), pre-approved terms include “downloadable computer software and applications,” “data processing equipment,” and “scientific and measurement apparatus.” In Class 42 (services), terms include “Software as a Service (SaaS),” “IT consultancy,” and “computer system design.” For common tech-related goods and services, adaptation is usually straightforward. For highly specialized offerings, more care is needed.
Conclusion
The 2025 reforms aim to make Brazil’s system quicker and simpler, but also raise the stakes at the filing stage. Companies should review their portfolios, plan specifications carefully, and adjust their filing strategies to make the most of the new framework — especially by using the pre-approved list wherever possible to control costs.
Published: https://mp.weixin.qq.com/s/uOCaGvs7PXGGRw3nE7An0A