Joest (Pty) Ltd v Jöst GmbH + Co KG and Others

The dispute concerned the lawful proprietorship in South Africa of the confusingly similar trade marks JOEST and JÖST used on vibrating machinery and related equipment. The first respondent, Jöst GmbH + Co KG, is a long‑established German manufacturer and international proprietor of the JÖST/JOEST marks. Its South African business was historically conducted through a wholly owned subsidiary, later partially and then wholly sold to the Vogel family, culminating in the appellant, Joest (Pty) Ltd. From 1976 until 2012 the South African entity manufactured and sold equipment under licence from Jöst, using its technology and branding. No agreement expressly assigned trade mark ownership to the South African company. Despite this, the appellant (through its controlling shareholder) registered the JOEST word and logo marks in South Africa in 1996 and 2010. After termination of the licence in 2012, the parties became competitors. Each sought expungement of the other’s trade marks and interdictory relief for infringement and passing off.

The main appeal by Joest (Pty) Ltd was dismissed with costs. The cross‑appeal by Jöst GmbH + Co KG was upheld. The appellant’s JOEST trade mark registrations were removed from the register. The appellant was interdicted from infringing Jöst’s registered trade marks and from passing off, ordered to remove the offending marks from all materials, and an enquiry into damages or reasonable royalty under section 34(4) of the Trade Marks Act was directed.

The case is a leading South African authority on trade mark proprietorship in the context of long‑standing licensing and subsidiary relationships. It affirms that trade mark ownership remains with the originator absent a clear assignment, and that a licensee or former subsidiary cannot appropriate a mark through registration or use. It also clarifies the approach to expungement, infringement and passing off where confusingly similar marks arise from a common commercial history.