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). In addition, he plays key roles in the Lawyers Council of Thailand (LCT), serving as vice chairman of the Foreign Affairs Committee, a member of the Board for Notarial Services Attorneys, and one of the main lecturers for LCT training courses.

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.

Datesort icon Title
June 12, 2017

Tilleke & Gibbins Earns “Gold Band” Status in Thailand in IAM Patent 1000

For the fifth consecutive year, Tilleke & Gibbins has earned a “Gold Band” ranking for patent work in Thailand by Intellectual Asset Management (IAM) Patent 1000 – the World’s Leading Patent...

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June 5, 2017

Asia IP Trademark Survey 2017 Awards Top Rankings to Tilleke & Gibbins in Four Countries

The Asia IP  Trademark Survey 2017 has recognized Tilleke & Gibbins with “Tier 1” rankings in three categories across four countries: Cambodia: Trademarks Myanmar: Trademarks Thailand:...

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May 12, 2017

Tilleke & Gibbins’ IP Practice in Thailand Receives Tier 1 Rankings from ALB

Tilleke & Gibbins’ intellectual property practice in Thailand has been recognized by Asian Legal Business  with “Tier 1” rankings for “Patents” and “Trademarks/Copyright.” The firm is one of...

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April 11, 2017

Tilleke & Gibbins Among Top Copyright Firms in Indonesia, Thailand, and Vietnam in MIP Rankings

Tilleke & Gibbins has been recognized as a “Recommended” firm in Indonesia, Thailand, and Vietnam in Managing Intellectual Property’s 2017 copyright rankings. This is the first year that Managing...

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March 10, 2017

Tilleke & Gibbins Earns Nominations for Tax Firm of the Year in Myanmar and Thailand in Asia Tax Awards 2017

Tilleke & Gibbins has been nominated for the International Tax Review’s Asia Tax Awards 2017 in two categories: Myanmar National Tax Firm of the Year Thailand National Tax Firm of the Year...

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May 23, 2017

PLC Patent Litigation Global Guide 2017/2018 – Thailand Chapter

Nandana Indananda, Siraprapha Rungpry

The Thailand chapter of Practical Law Company’s recently published Patent Litigation Global Guide was coauthored by partner Nandana Indananda and consultant Siraprapha Rungpry at Tilleke...

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May 5, 2017

Lex Mundi Guide to Doing Business in Thailand 2017

As part of its membership in Lex Mundi, Tilleke & Gibbins has published an updated edition of its Guide to Doing Business in Thailand for 2017.This guide offers a broad introduction to all of the...

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February 15, 2017

Case Study: The Supreme Court’s Interpretation on Descriptive Trademarks

Chidapa Kongrassmee, Nandana Indananda

Lack of distinctive character is one of the most common reasons raised by the Trademark Registrar and the Board of Trademarks in Thailand to reject a trademark for registration. Given that many brand...

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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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