who

Menno Heerma van Voss

Menno advises large and small companies for years with respect to intellectual property, (comparative) advertising, e-commerce, ICT, privacy and consumer law.

Menno is a seasoned litigation attorney with more than 20 years of experience in courts and at the Dutch Advertising Code Commission.

He also has extensive experience with various commercial contracts, such as license, distribution and R&D agreements.

In addition, Menno frequently publishes and gives lectures and courses.

Before establising KEENON, he worked at Baker & McKenzie and was a partner at the IP & ICT boutique law firms SOLV and Ventoux.

voss@keenon.nl
+31 6 5353 8737

matters

Trade mark and trade name infringement. Vakantieveilingen.nl – an a priori descriptive trade mark and name – was confronted with a competitor using the trade and domain name Vakantieveiling.nl. Successfully, a cease and desist order was requested. Menno assisted Vakantieveilingen.nl in both instances.
Read the judgment of the Court of Appeal in Dutch here.

Trade mark law. Proprietor of brand EnergyAPK demanded energy supplier Essent to stop its use of the sign Energy-APK. Menno represented Essent in summary proceedings. The judge dismissed the claims.
Read the decision in Dutch here.

Infringing brand use by retailer/distributor. A webshop specialized in Talens products used Talensshop.nl as its trade name, brand and domain name. Talens, assisted by Menno, successfully requested a cease and desist on the basis of trade mark and trade name rights infringement.
Read the judgment of the Court of Appeal in Dutch here.

Copyright. Plaintiff demanded immediate cease and desist of an TV commercial from telecom provider Online, because the commercial would infringe the copyrights of plaintiff. Menno argued the opposite. All demands were rejected.
Read the decision in Dutch here.

Copyright and slavish imitation. An ex-distributor of the plaintiff brought its own baby sleep wrap on the market, which according to the plaintiff infringed upon the copyrights on its sleep wrap and was a slavish imitation. Menno defended successfully the opposite in the summary proceedings.
Read the decision in Dutch here.

Unlawful publication and copyright. In summary proceedings, plaintiff requested a publication ban of publisher’s magazine. Menno represented the publisher PROPERTYNL. All claims were rejected.
Read the decision in Dutch here.

Use of trade mark and name of public figure in advertising. Carglass used the first name of chef Cas Spijker in its national newspapers advertisement with the strap line “Cas, even with us you lose your star”. Cas Spijkers claimed material and non-material damages. Both were rejected. Menno was Carglass’s attorney.
Read the decision in Dutch here.

Commodities Act, food and health claims, labelling and misleading advertising. Competitor San Carlo resisted the use of images of an olive oil can and olives on the packages of Smiths’ Mediterraneas chips and sought an order that Smiths (Lays) would refrain from using and publish a rectification. With reference to market research and the Darbo-judgment of the EC Court of Justice, Menno argued the use of the images was not misleading. The claims were rejected by the District Court and the Court of Appeal.
Read the judgment of the District Court in Dutch here.

Comparative advertising and denigrating brand use. Hans Anders summoned in summary proceedings Specsavers to stop its comparative advertising campaign. Menno advised Specsavers during the creation of the campaign and was Specsavers’ litigation lawyer. It was argued that the comparison and the use of the expression “Other than Hans” were  lawful. All requests were dismissed.
Read the decision in Dutch here.

Design and copyrights infringement, ex parte order. Motor clothing producer Motoport had introduced a new design motor safety vest, when it soon afterwards was confronted with a look-a-like safety vest distributed by one of its competitors. On behalf of Motoport Menno filed a request for an ex parte cease and desist court order, which was rendered by the court the same day.
Read the court order in Dutch here in PDF.

publications

Geen enkele reden (meer) om concurrenten een beroep op artikelen 6:193a-j BW te ontzeggen. (Not an argument left to deny competitors invoking unfair commercial practice law.)
IER 2017/23

Case comment on Nouvelle Welle Volkskrant-decision, Board of Appeal Dutch Advertising Code Commission – advertising or review?
IER 2015/50

Case comment on Wakker Dier/Albert Heijn-decision, Dutch Advertising Code Commission – objective/subjective claims & burden of proof in advertising.
IER 2015/9

Merkgebruik op internet en in sociale media. (Trade mark use on internet and social media)
Fenedexpress, Oct 2012, nr. 370

L’Oréal/eBay-arrest, genoeg voer voor nieuwe merk-jurisprudentie en aansprakelijkheid voor ISPs een stap dichterbij? (L’Oréal/eBay-decision, enough food for new trademark case law and liability for ISPs a step closer?)
NtEr November 2011, nr. 9

Google AdWords: het Hof maakt veel duidelijk, maar we zijn er nog niet. (Google AdWords: the Court clarifies a lot, but we are not there yet).
NtEr July 2010, no. 6

Nu ook spamverbod voor bedrijven onderling. (Now also B2B spam prohibition)
FD, 22 September 2009

Voor navolgers is het oppassen geblazen. (Imitators are warned)
FD, 7 July 2009

Red Pandora! (Save Pandora!)
Emerce nr. 69, 2007

Wanneer is bluecasting spam? (When is bluecasting spam?)
Emerce, 3 May 2007

Gij zult niet googlen en geen pod gebruiken! (Thee shall not google and not use pod!)
MarketingTribune, 3 October 2006, no. 20

Design en dessin; origineel of namaak? (Design and dessin; original or imitation?)
MarketingTribune, 5 September 2006, no. 8

Walhalla voor merkbeschermers. (Walhalla for brand protectors.)
FD, 22 July 2006

Biostabil. Klaagsites en de spelregels (Biostabil. Complaint sites and the rules of the game)
JAVI, no. 5, November 2004, p. 182 – 185

3D shape marks and public interest. The boundary between functional and aesthetic design. Stormy weather ahead for design products?
ECTA Newsletter, no. 47, October 2003.

Vormmerken en techniek, voor en na Philips/Remington (3D shape marks and technique, before and after Philips/Remington)
BMM Bulletin, 2002, no. 4, Winter 2002, p. 182 -187

Association or confusion?, that is the question
EUROlawyer, issue 6, May 1998, p.10 – 11

In the Dutch Copyright world the winner cannot take it all
!
Copyright World, December 200/January 2001 p. 8 – 9

presentations

Privacy Law & Ethics. What should executives know to responsibly use big data and to avoid being caught in a scandal?
Lecture at The Analytics Academy, March 28, June 20, July 19 and November 7, 2017

Social Media Marketing & reclame recht. Waar gaat dit naar toe?
(Social Media Marketing & advertising law. Where does that lead to?).
National Advertising law Congres, December 12, 2014

Reclamerecht – OHP, Commerciële Communicatie. (Advertising law – UTP, Commercial communication.)
Lectures, Law faculty University of Amsterdam, November 20, 2008 and November 5, 2009

OSS en Auteursrecht (Open Source Software and Copyrights)
Lecture at NVvIR autumn seminar, Amsterdam, December 16, 2004

Commerciële communicatie en oneerlijke mededinging (Advertising and unfair competition)
Lecture, Law faculty University of Amsterdam, April 29, 2004, together with professor Mr. J.J.C. Kabel

Parallelimport en intellectuele eigendomsrechten (Parallel import and Intellectual Property rights) Lecture at the Chamber of Commerce in Alkmaar, The Netherlands, May 30, 2000

Parallelimport en merkenrecht (Parallel import and trademark rights)
Lecture at the Chamber of Commerce in Amsterdam, The Netherlands, November 6, 1997

Trademark rights in Europe
Intellectual Property law of the EU-course for Bulgarian judges organized by the Netherlands Helsinki Committee, The Hague, The Netherlands, November 20, 2002

Kunst en Auteursrecht (Art and Copyrights)
Lectures, Academy of Fine Arts of Breda, The Netherlands, 1995, 1996 and 1997

memberships

Marques – member of the Anti-Counterfeiting & Parallel Trade team
BMM (Benelux Association for Trademark and Design Law)
AIPPI (International Association for the Protection of Industrial Property)
ALAI (International Literary and Artistic Association)
VvRr (Association for Advertsiing law Reclamerecht)
VMC (Association for Media and Communication Law)
VIEPA (Association of Intellectual Property litigation attorneys)
LES (Licensing Executives Society)