Nandana Indananda

Partner
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T: +66 2653 5879
F: +66 2653 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 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.

  • Represented 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 an Italian fashion brand in a civil action against the Department of Intellectual Property to appeal the Board of Trademarks’ rejection of the client’s trademark application.

  • Secured the registration of a trademark for a market leader in aircraft components in an appeal at the IP&IT Court.

  • Secured a trademark litigation victory for an agrichemical company against its former distributor, who was passing off of 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.

Datesort icon Title
September 12, 2014

Asia IP Patent Survey 2014: Tilleke & Gibbins Ranked in Tier 1 for Thailand

Tilleke & Gibbins has been ranked as a “Tier 1” firm for both “Patent Contentious” and “Patent Prosecution” work in Thailand by Asia IP  in its annual Patent Survey. The survey provides an...

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August 26, 2014

FCCT: Nandana Indananda to Speak on Commercial Surrogacy in Thailand

Nandana Indananda

Thailand’s industry of commercial surrogacy continues to find itself at the center of public debate, with the news of a Japanese man attempting to father at least 15 children through Thai surrogates...

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August 13, 2014

Al Jazeera Interviews Nandana Indananda on Surrogacy in Thailand

Nandana Indananda

In light of the growing controversy surrounding the practice of commercial surrogacy in Thailand, Al Jazeera interviewed Nandana Indananda, a partner in Tilleke & Gibbins’ intellectual property...

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August 7, 2014

Associated Press: Nandana Indananda Interviewed on Commercial Surrogacy in Thailand

Nandana Indananda

The issue of surrogacy has once again taken a foothold in the sphere of public debate with news of an Australian couple allegedly abandoning their disabled surrogate baby with his Thai surrogate...

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July 9, 2014

Asia IP Trademark Survey – Tilleke & Gibbins Ranked in Tier 1 for Thailand

Tilleke & Gibbins has been ranked “Tier 1” for both “Trademark Prosecution” and “Trademark Contentious” work in Thailand by Hong Kong-based legal publication Asia IP in its annual Trademark...

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September 1, 2014

The International Comparative Legal Guide to: Patents 2015 – Thailand Chapter

Nandana Indananda, Nuttaphol Arammuang

The 5th edition of The International Comparative Legal Guide to: Patents has been published. The book takes an in-depth look into the patent laws of 34 jurisdictions worldwide, and is written from a...

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July 4, 2014

Board of Trademarks Decisions Highlight Difficulty of Cancelling Mark for Non-Use

Nandana Indananda, Parichart Monaiyakul

The Thai Trademark Act allows any interested party or the registrar to file a petition with the Board of Trademarks to cancel a trademark registration on the basis of non-use. In order for a mark to...

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November 26, 2013

Landlord Liability Research Progresses

Nandana Indananda, Kawin Kanchanapairoj

In the August 2013 issue of Informed Counsel, we updated readers on the return of talks about enacting legal measures against landlords whose acts contribute to copyright and trademark infringement...

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September 12, 2013

The International Comparative Legal Guide to: Patents 2014 – Thailand Chapter

Nandana Indananda, Nuttaphol Arammuang

The 4th edition of The International Comparative Legal Guide to: Patents provides a practical cross-border insight into patent law, across 33 jurisdictions. Partner Nandana Indananda and attorney-at-...

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September 2, 2013

Update on Landlord Liability for Copyright and Trademark Infringement

Nandana Indananda, Kawin Kanchanapairoj

For many years, Thailand has sorely needed to improve its intellectual property enforcement laws to prevent copyright and trademark infringement. In an era when technology allows for new, widespread...

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