Trademarks

INPI expands office actions in trademark examination: administrative efficiency or a new obstacle to registration?

By Rafaela Borges Walter Carneiro, partner at Dannemann Siemsen

The Brazilian National Institute of Industrial Property (INPI) announced on October 16, 2026 a new phase of its Trademark Examination Optimization Plan. The plan expands the situations in which substantive office actions are issued in batches to verify applicants' standing. INPI presents the measure as administrative streamlining and a way to shorten examination times. It covers several classes of goods and services, especially those linked to regulated activities or activities subject to specific licensing requirements.

Shortening examination times is a legitimate goal. But the expansion raises questions about the limits of INPI's authority, the interpretation of Article 128, § 1, of Law No. 9,279/1996 (the Industrial Property Law, or LPI), and the need to examine each application individually. A standardized office action serves as an initial step to clarify matters. It cannot replace the examination of the specific case.

What has changed in trademark examination:

The plan is not new. Since February 2026, INPI has used batch substantive office actions to examine situations involving applicants' standing. The first phase covered applications filed by individuals and individual micro-entrepreneurs (MEIs) in Classes 3 and 5, owners with an inactive CNPJ (Brazilian corporate taxpayer ID), applicants with multiple applications in different classes, and marks containing the term "cachaça".

With the October expansion, the category of individuals and MEIs now covers a much wider range of activities. INPI has divided them into three groups:

- entire classes: in addition to Classes 3 and 5, Classes 1 (chemicals), 2 (paints and varnishes), 7 (machines and motors), 13 (firearms and ammunition) and 19 (building materials);

- entire classes with exceptions: Classes 4, 10, 11, 12 and 34, in which certain goods have been excluded;

- specific activities in Classes 36, 37, 38, 39, 40, 41 and 44, including banking services, telecommunications, energy transmission, production of pharmaceuticals, higher education and hospital services.

The expansion does not mean that all applications in these classes will be refused, nor that every company in these sectors will have to prove regulatory authorization in order to register a trademark. The announcement concerns batch office actions, particularly in the category of individuals and MEIs. Reading the measure more broadly would be an overstatement.

Applicant standing and Article 128 of the LPI:

INPI relies on Article 128, § 1, of the LPI. Under this provision, private-law persons may only apply to register a trademark for an activity they actually and lawfully carry out, either directly or through companies they directly or indirectly control. The rule aims to prevent someone with no real connection to the activity from speculatively appropriating distinctive signs.

Applying it, however, requires care. Standing to apply for a trademark is not the same as already selling all the goods or providing all the services listed in the application. Nor is the absence of an activity from the applicant's economic activity registration, on its own, enough to show incompatibility. INPI's Trademark Manual accepts that ancillary activities may justify protection for goods and services that do not literally match the declared main activity. The law, moreover, expressly provides for the activity to be carried out by controlled companies.

The standing analysis should therefore take into account the applicant's economic reality, the nature of the goods or services claimed and the business organization of the party filing.

Five practical examples:

1. An individual and cosmetics:

An entrepreneur has created a brand for a future beauty line and plans to hire a manufacturer to produce the goods. She files in Class 3. Not having her own factory does not mean she lacks standing. She will, however, need to show economic activity compatible with the goods claimed, through contracts, commercial documents or other evidence. A mere intention to enter the market, without actual activity, may not satisfy Article 128. The examination must distinguish legitimate outsourcing of production from an abstract intention to exploit a trademark.

2. An MEI and hospital services:

An MEI applies for registration in Class 44 for hospital services. This type of service requires a structure and legal and regulatory requirements that, as a rule, are not compatible with the individual activity of an MEI. An office action to clarify the activity actually carried out may be fully justified. But any refusal must be based on concrete incompatibility with the legal requirements, not on the fact that the application falls in Class 44.

3. Holding company and its subsidiaries' marks:

A holding company centrally manages the trademarks of a group active in pharmaceuticals, medical equipment and healthcare services. It does not manufacture pharmaceuticals or provide hospital services directly, but Article 128, § 1, allows the activity to be carried out by directly or indirectly controlled companies. The absence of these activities from the parent company's corporate purpose does not, by itself, lead to a finding of lack of standing. The corporate structure and the control relationship are essential to the analysis. The example shows why a standardized procedure cannot replace an individual assessment of the applicant's situation.

4. A technology company and financial services:

A company that develops software for financial institutions applies for registration in Class 36 for banking services. Supplying technology to banks is not the same as providing banking services. If the company only supplies software, the specification may not correspond to its actual activity. If it belongs to a group that provides these services through a controlled, duly licensed institution, the conclusion may be different. What must be examined is the activity claimed, not merely the sector in which the company operates.

5. Educational services:

An individual or MEI applying for registration in Class 41 for university services may receive an office action asking them to clarify their standing. The case differs from that of a duly incorporated and authorized higher education institution. Trademark registration does not replace educational accreditation, and accreditation does not dispense with trademark protection. They are regimes with different purposes, which only meet in the analysis of whether the activity is lawful and actually carried out.

Regulated activities and trademark rights:

The inclusion of financial services, telecommunications, pharmaceuticals, higher education and healthcare reflects INPI's understandable concern with activities subject to specific oversight. But trademark registration does not authorize anyone to carry out a regulated economic activity. And INPI's authority to examine an applicant's standing does not make it responsible for replacing the technical assessments of regulators such as Anvisa (health surveillance), the Central Bank of Brazil and Anatel (telecommunications), which have their own remits.

Trademark examination should take the lawfulness of the activity into account without going beyond its institutional purpose. This matters all the more because a trademark may be used in a variety of business models: licensing, distribution, outsourced manufacturing, or exploitation by companies within the same economic group. An office action must be suited to the specific case and proportionate to the doubt it seeks to clarify.

The risk of standardized office actions:

The batch procedure can help manage the volume of applications. Standardization makes it possible to identify recurring situations, streamline tasks and focus examiners on the more complex issues.

The problem arises when the efficiency tool starts to replace individual analysis. An automatic office action is legitimate as an initial request for clarification. But the applicant's response must be examined in light of the documents, the arguments and the particularities of the case. The principles of legality, reasonableness, proportionality, reasoned decision-making and efficiency must be observed. Overly generic office actions also shift to the applicant the burden of guessing which circumstance gave rise to the examiner's doubt. Transparent criteria and clear office actions provide predictability and allow for appropriate responses.

What changes for companies and lawyers:

The expansion calls for greater care in preparing applications, especially those filed by individuals and MEIs in regulated sectors. Before filing, it is advisable to check whether the specification of goods or services matches the activity the applicant actually carries out, and to assess which documents demonstrate that compatibility. In more complex structures, the relationship between parent and subsidiary companies, the indirect exploitation of activities and the way ownership of intellectual property assets is organized must all be considered.

When an office action is issued, the response should address the doubt raised, rather than rely on merely standardized submissions. A specialized professional can help distinguish genuine lack of standing from cases in which the activity is lawful and compatible but requires a more detailed documentary or legal explanation.

Administrative efficiency requires legal certainty:

INPI's initiative deserves to be examined without prejudice. Reducing trademark examination times is a long-standing demand of users and a legitimate goal of public administration. Efficiency, however, is not the same as indiscriminate automation.

Article 128, § 1, of the LPI sets out an important requirement, but its application depends on a contextual interpretation. The diversity of business models, outsourcing, economic groups and the complexity of regulated sectors make it impossible to assess standing on formal or classification-based criteria alone.

The plan's challenge is to show that examination can be accelerated without lowering the quality of decisions. Technology and standardization should help INPI decide better, not just faster. The success of this modernization will be measured by legal certainty, the consistency of decisions and the ability to recognize each applicant's particular circumstances, and not merely by the number of applications processed.

References:

1. INPI. Expansion of the Trademark Examination Optimization Plan and guidance for users (Ampliação do Plano de Otimização do Exame de Marcas e orientações aos usuários). October 16, 2026.

2. Law No. 9,279/1996, especially Article 128, § 1.

3. INPI/PR Ordinance No. 08/2022, Article 27.

4. INPI. Trademark Manual (Manual de Marcas), item 5.5 (Analysis of the applicant's standing).

5. INPI. Ongoing Dialogue with Stakeholders (Diálogo Permanente com as Partes Interessadas), meeting scheduled for November 17, 2026