Arnold M. Friedman, Pittsburgh, for appellant.
Robert A. Kelly, Pittsburgh, for appellee.
Watkins, President Judge, and Jacobs, Hoffman, Cercone, Price, Van der Voort and Spaeth, JJ. Spaeth, J., did not participate in the consideration or decision of this case. Van der Voort, J., dissents.
[ 242 Pa. Super. Page 266]
Appellant contends that the lower court should not have enjoined his use of the corporate name "International Inventors".
On December 8, 1973, appellee, International Inventors Incorporated, East, a Virginia corporation, entered into a business agreement with appellant, Martin Berger. The agreement provided, in relevant part, the following: "WHEREAS, COMPANY has developed procedures for counseling, marketing, analysis, product evaluation, disclosure protection, patent searches, engineering services, professional produce presentations, marketing and related services to inventors; WHEREAS, COMPANY has developed an advertising, publicity and interviewing program, together with other methods for soliciting and securing inventor clients and is prompting a series of Inventor Consulting Services using the name INTERNATIONAL INVENTORS, and WHEREAS, DIRECTOR [appellant] is desirous of managing one or more similar type consulting services, and wishes to secure the benefits of the experience and promotional efforts of COMPANY, the use of COMPANY'S methods, materials, publications, and the development and marketing procedures and to use the name INTERNATIONAL INVENTORS; . . . IT IS THEREFORE MUTUALLY AGREED 1. That the parties hereto will form a Corporation and distribute shares of stock . . . within (30) days of the date of this Agreement. Further, the parties agree to choose a corporate name partially containing the words INTERNATIONAL INVENTORS or a derivative thereof
[ 242 Pa. Super. Page 267]
. . . ."*fn1 The agreement further provided that appellant was to be appellee's exclusive director in Western Pennsylvania.
By agreement dated January 30, 1975, the parties agreed to terminate their relationship and thereby declare the December 8, 1973 agreement null and void. Prior to the effective date of the agreement, however, appellant's wife filed a fictitious name registration*fn2 with the Allegheny County Prothonotary indicating that she intended to do business under the name "International Inventors". On January 22, 1975, appellant's wife was deleted from and appellant added to the registration form. Thereafter, despite the January 30, 1975 agreement, appellant continued to do business using, among other names, the name "International Inventors".
On June 6, 1975, appellee filed a complaint in equity claiming that appellant, by conducting business under the name "International Inventors", had appropriated the appellee's business name. Appellee, therefore, requested that appellant be enjoined from using that name and that appellee be awarded damages in excess of $10,000. A hearing on the request for an injunction was held on June 12, 1975;*fn3 and on June 19, 1975, the lower court issued an order which enjoined appellant "from using the name International Inventors, International Inventor's, International Inventors Incorporated, International Inventors Incorporated, East, or other names similar to that of the Plaintiff." Appellant's exceptions, filed on June 23, 1975, were denied and this appeal followed.
Because the appellee failed to obtain a certificate of authority to do business in Pennsylvania, appellant initially
[ 242 Pa. Super. Page 268]
contended at the June 12, 1975 hearing that the appellee was precluded from maintaining the instant action. Section 2001 of the Business Corporation Law*fn4 provides that "[a] foreign business corporation, before doing any business in this Commonwealth, shall procure a certificate of authority to do so from the Department of State . . . ." Section 2014 of the Business Corporation Law*fn5 specifies the penalty for doing business without a certificate: "[n]o foreign business corporation transacting business in this Commonwealth without a certificate of authority shall be permitted to maintain any action in any court of this Commonwealth until such corporation shall have obtained a certificate of authority." The lower court, relying on ...