Leaders at two Brazilian law firms outline strategies to adjust to trademark fee changes at Brazil’s IP office while urging clients to apply before September 20
Brazil’s Patent and Trademark Office will introduce a second phase of fee changes on September 20, shifting all trademark costs to the time of filing and eliminating allowance fees.
Brazil’s Patent and Trademark Office (INPI) aims to modernise its systems by streamlining processes and aligning itself with global filing standards.
The reform is rolling out in three waves: general fee changes took effect on August 7, trademark fee changes will occur on September 20, and patent fee changes are scheduled for December 20.
With the second wave of fee changes approaching, firms are working closely with clients to prepare for the new trademark application updates.
Managing IP sat down with senior partner Rafael Garutti at IP law firm Carlos Antonio, Neves & Vidal, along with partner Robert Daniel at IP and tech law firm Daniel Law, to discuss how the updates could affect clients.
Tough times ahead
Several changes will go into effect on September 20, including fast-track examination for certain trademarks, discounts for eligible groups, and immediate issuance of registration certificates upon approval.
The most significant change is that all trademark application costs must now be paid in full at the time of filing, with the allowance fees eliminated.
Under the previous fee schedule, applicants paid the filing fee when submitting an application, with the allowance fee due only after approval.
With the new structure, the allowance fee has been eliminated but filing fees have risen. The overall cost to submit a trademark application is lower, but the high upfront costs and lack of refunds make applications riskier if they are rejected.
The new schedule also treats classification choices differently. Applications that use the Nice Classification system have a 20% cost reduction, while those filing under the free description approach, where applicants specify products and services in their own words, face a 96% fee increase with the new system.
Despite the INPI’s efforts to simplify filing processes, both partners speculate that clients may suffer from the adjustment.
Garutti says small businesses may struggle to pay all fees upfront.
“A small business in Brazil cannot pay everything upfront, even though, in general terms, the total amount of fees is reduced.
“In the past, they had time to work on the cash flow, but now you need to pay everything upfront, so it’s difficult,” he adds.
Both partners note that the upfront payment, lack of refunds on rejected applications, and higher fees for free description classification could put financial stress on clients.
New opportunities
With these updates, firms are moving quickly to explain the changes to clients.
Daniel says his firm is arranging tailored conversations to prepare clients for the next phase of fee changes.
“We sent out general communications about this update and are offering to set up individual calls with clients to discuss fee changes in more detail based on their portfolios,” says Daniel.
Garutti notes that his firm is conducting webinars to help its clients understand the new rules.
“First, we communicated the changes to clients by e-mail. Now, we are conducting several webinars to explain the differences between past and present rules. This transparency makes us unique because we deliver all the information,” says Garutti.
While these changes in trademark fee structures can be challenging, some firms view this change as an opportunity to advance their services.
As Daniel notes: “Every time there’s a change, there’s an opportunity for us to consider new offerings for clients and different ways of working.”
“We always look at these changes as something very positive because having something new to strategise over is the goal for a firm that positions itself in a leading role in IP.”
Act fast
Both firms acknowledge that clients and practitioners will find it challenging to adjust to the new system.
However, they also say the fee changes will strengthen Brazil’s position in the IP market by aligning its policies with international standards.
Garutti notes that the new filing system will help the INPI “manage deadlines, speed up procedures, and create a predictable, business-friendly IP environment.”
Both firms urge clients to file now, during the transition period before September 20, when applicants still pay only the filing fee at submission rather than the higher amount required under the new system.
For those filing later, the focus is on making careful class selections and budgeting for the full amount at the time of filing.
With trademark filings in Brazil rising by roughly 15% a year, monitoring INPI changes will be essential to avoid unnecessary costs or delays.