Nandana Indananda

Partner
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T: +66 2056 5879
F: +66 2056 5678

Practices

Office

Languages

Thai, English

Education

Master of Law and Technology, University of Stockholm

LLM, University of Leicester

LLM, University of Hong Kong

LLM, Ramkhamhaeng University

LLB, Ramkhamhaeng University

Nandana Indananda, a former judge of the Central Intellectual Property and International Trade Court, is a partner in Tilleke & Gibbins’ intellectual property group. He counsels clients on a broad range of laws including intellectual property, e-commerce, information technology, and biotechnology matters. Widely known as an expert in complex litigation, Nandana has successfully led IP litigation teams in several patent and trade secret lawsuits on high-technology assets. He has been recognized by the WTR 1000  as one of the top enforcement and litigation lawyers in Thailand, while the IAM Patent 1000  has described him as a “top-flight patent litigator.”

Nandana obtained masters’ degrees in law from renowned universities in Hong Kong, the United Kingdom, and Sweden. He continues to conduct in-depth legal research and is a frequent contributor to definitive legal journals. Nandana regularly gives lectures at top universities, and he is a special lecturer for the World Intellectual Property Organization (WIPO).

Nandana has completed the Barrister-at-Law requirements of the Institute of Legal Education, Thai Bar Association.

  • Acted on behalf of our client before the IP&IT Court and obtained a very favorable settlement just prior to the rendering of judgment in what has been widely regarded as the largest and most complex patent infringement case in Thai history. In this multijurisdictional case, our team not only secured a rare Anton Piller order to seize infringing goods, which enabled us to successfully prove infringement, but also formulated extensive strategies for protecting the validity of our client’s patent.

  • Won a historic judgment for a global technology leader against former employees who misappropriated our client’s tremendously valuable trade secret technology. In the IP&IT Court decision, our client was awarded an injunction against use and disclosure of its trade secret technologies, including machines, processes, and information. Our client also received substantial damages and recovery of legal fees. This was the first case that a trade secret owner has successfully enforced against trade secret misappropriation in Thailand.

  • Acted as counsel to a major pharmaceutical company, which representation included liaising with the Thai FDA on marketing compliance issues, verifying that the client’s marketing activities were in compliance with the complex regulations governing pharmaceutical practice in Thailand, and preventing and mitigating risk and loss.

  • Represented a multinational pharmaceutical company in patent infringement litigation against a local generic company.  Managed a major pharmaceutical-related patent during a trial on patent infringement.

  • Liaised with the Royal Thai Police to end a predatory business tactic. As our client operates in many provinces in Thailand, a competitor filed criminal charges of “false statement” against our client in many provinces in order to force our client to spend time and money travelling to meet police officers throughout Thailand. We convinced the Royal Thai Police that the cases were related and should be consolidated and tried in Bangkok.

  • Represented a top Italian fashion design company in a case before the IP&IT Court. The IP&IT Court cancelled the defendants’ 18 trademarks, awarded a substantial amount of compensation to the client, and issued a permanent injunction prohibiting the defendant from using marks similar to the client’s trademarks and trade name.

  • Represented a highly successful Chinese manufacturing enterprise in a dispute with a Malaysian manufacturing company concerning the worldwide usage of similar trademarks pertaining to vehicles. A favorable resolution was reached through negotiation.

  • Represented a top Italian fashion brand in a civil action against the Department of Intellectual Property at the IP&IT Court to appeal the Board of Trademarks’ refusal of our client’s trademark applications. The Court withdrew the Board’s decision and accepted our client’s trademarks for registration.

  • Represented a leading British retailer in a cancellation action against a Thai company at the IP&IT Court. The Court cancelled several of the defendant’s trademark registrations and issued a permanent injunction prohibiting the defendant from using marks similar to our client’s trademarks and trade name.

  • Secured a trademark litigation victory for an agrichemical company against its former distributor, who was passing off our client’s trademarks. Finding in favor of our client’s better right, the IP&IT Court ordered the cancellation and withdrawal of 16 of the former distributor’s trademarks containing logos and wording that infringed our client’s mark and further ordered that use of the infringing marks cease.

  • Advised a pharmaceutical client on various IP issues, such as product liability, government advocacy on new regulations, compulsory licenses, new laws (Patent Act, Drug Act), and trademark registration.

  • Represented a leading Japanese electronics company in a patent infringement case against a Thai distributor which concluded in an amicable settlement through mediation in less than one year. The settlement included the seizure and disposal of existing counterfeit inventory, an agreement to stop the sale and marketing of counterfeit products, and a marketing awareness campaign educating the public on the differences between authentic and counterfeit products.

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November 25, 2016

The Asian Lawyer: Tilleke & Gibbins Named Intellectual Property Firm of the Year

The Asian Lawyer  has named Tilleke & Gibbins as the Intellectual Property Firm of the Year as part of its annual Emerging Markets Awards. Suebsiri Taweepon, a partner in Tilleke &...

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November 16, 2016

Legal 500 Asia Pacific 2017: Tilleke & Gibbins Ranked in Tier 1 for IP and TMT in Thailand

Tilleke & Gibbins has been ranked in “Tier 1” for Intellectual Property and Technology, Media, and Telecommunications in Thailand in the 2017 edition of The Legal 500 Asia Pacific, a guide to the...

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November 4, 2016

Asialaw Profiles 2017: Tilleke & Gibbins Leads All Firms in Rankings in Thailand

Asialaw Profiles 2017, a guide to the leading domestic and regional firms in the Asia Pacific, has awarded top rankings to Tilleke & Gibbins in Thailand. The rankings, which are determined...

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October 12, 2016

Tilleke & Gibbins Named as Trademark and Copyright Firm of the Year in Thailand at 2016 Asia IP Awards

Tilleke & Gibbins has been named the Trademark Firm of the Year and the Copyright Firm of the Year in Thailand at the 2016 Asia IP Awards. The winners of the awards were announced at a ceremony...

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September 28, 2016

Asialaw Asia-Pacific Dispute Resolution Awards 2016: Tilleke & Gibbins Named Law Firm of the Year in Thailand

Placing our firm at the top of the legal market, Tilleke & Gibbins has received the “National Law Firm of the Year – Thailand” award at the Asialaw Asia-Pacific Dispute Resolution Awards 2016,...

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September 13, 2016

The International Comparative Legal Guide to: Patents 2017 – Thailand Chapter

Nandana Indananda, Siraprapha Rungpry

The International Comparative Legal Guide to: Patents, 7th edition, is a Q&A-style guide to patent law in 28 jurisdictions worldwide. The Thailand chapter of the guide, contributed by Tilleke...

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August 24, 2016

Global Patent Litigation 2016 – Thailand Chapter

Nandana Indananda, Piyawat Kayasit

The 2016 update of Global Patent Litigation  provides a comprehensive overview of patent law and litigation in six jurisdictions. It covers how a patentee can enforce a patent and what pitfalls...

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June 3, 2016

Trademark License Agreements in Thailand: Choice-of-Law Clauses and Registration Requirements

Nandana Indananda, Ploynapa Julagasigorn

In order to receive royalties, a trademark owner may license out its trademark rights to another party. To license trademark rights, a trademark license agreement must be made in writing and...

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March 23, 2016

Intellectual Property in Thailand: Registration, Protection, Commercialization

Written for business operators who are new to the country, Intellectual Property in Thailand: Registration, Protection, Commercialization  provides a helpful introduction to IP issues under Thai...

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January 26, 2016

PLC Patent Litigation Global Guide 2016/17 – Thailand Chapter

Nandana Indananda, Siraprapha Rungpry

Patent Litigation, published by Practical Law Company, provides a high-level overview of patent disputes, including patent infringement, conditions for a declaratory judgment, invalidation...

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