On October 25 1995 a Polish entrepreneur Tomasz Bednarski conducting business under the company name Optyk Tomek in Warsaw applied for registration of a word trade mark Optometrysta ("optometrist") in class 42 for services such as "examination of eye refraction, selection of spectacles for individual needs, selection of contact lenses for individual needs, selection of telescopic spectacles for individual needs". On August 4 1998, the trade mark was registered by the Polish Patent Office under number R-104424.
In February 2007, the President of the Executive Board of the Polish Society of Optometry and Optics informed the Polish Patent Office that the word optometrysta is a common profession name, used at least since 1983. In March 2007, the request for invalidation of the trade mark was filed by the President of the Patent Office, based on claims that the registration was granted against Article 7(2) of the former Polish Trade Mark Law of 1985 (the Law on Trade Marks of January 31 1985, Journal of Laws of 1985, Number 5, item 15 with later amendments):
- The only signs that shall be eligible for registration as trade marks are those that have sufficient distinctiveness in ordinary economic activity.
- A sign shall not have sufficient distinctiveness if it simply constitutes a generic designation of the product, if it simply makes a statement as to the properties, quality, number, amount, weight, price, purpose, manufacturing process, time or place of production, composition, function or usefulness of the goods or any similar information that does not enable the origin of the goods to be determined.
This was in connection with Article 167(2) of the Law of June 30 2000 – the Law on Industrial Property – published in Journal of Laws of 2001, Number 49, item 508, uniform text of June 13 2003, and Journal of Laws Number 119, item 1117, with later amendments:
The General Public Prosecutor of the Republic of Poland or the President of the Patent Office may, in the public interest, request that the right of protection for a trade mark be invalidated or intervene in an invalidation action already pending.
According to the President of the Polish Patent Office, the trade mark Optometrysta is simply the name of a profession. The World Council of Optometry defines optometry as: "A healthcare profession that is autonomous, educated, and regulated (licensed/registered), and optometrists are the primary healthcare practitioners of the eye and visual system who provide comprehensive eye and vision care, which includes refraction and dispensing, detection/diagnosis and management of disease in the eye, and the rehabilitation of conditions of the visual system."
In 1999 the profession was entered on to the list of professions performed in Poland, which is kept by the Ministry of Labour and the President of the Central Statistics Office.
During the hearings at the Patent Office, the owner of the mark declared that he performed the services under the mark, and according to his knowledge, the mark had not been earlier registered in the name of any other party. In view of this, he decided to apply for registration of the mark with the aim of obtaining financial benefit.