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,” and Chambers Asia-Pacific  has recognized his extensive experience in handling patent and trade secrets cases.

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.

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September 13, 2010

Search Warrants in IP Criminal Actions

Nandana Indananda, Suebsiri Taweepon, Yuwadee Thean-ngarm

On September 8, 2010, the Intellectual Property and International Trade Court (IP&IT Court) held a meeting to discuss and gather comments and recommendations on the procedure for issuing search...

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January 28, 2011

Firm’s IP Experts Present on Trade Secrets

Nandana Indananda, Siraprapha Claassen

IP specialists, Nandana Indananda, Partner, and Siraprapha Rungpry, Consultant, presented on “Protecting and Enforcing Business Trade Secrets,” at the fifth IP Lunch Talk at the Tilleke & Gibbins...

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February 9, 2011

Tilleke & Gibbins Names New Partners

Alan Adcock, Nandana Indananda, Thomas J. Treutler

Tilleke & Gibbins, the largest independent law firm in Thailand, proudly announces the appointment of Alan Adcock, Nandana Indananda, and Thomas J. Treutler as Partners of the firm. Alan Adcock...

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February 15, 2011

Tilleke & Gibbins Lawyers Present on IP Issues Affecting the Spa and Wellness Industry

Alan Adcock, Jakkrit Kuanpoth, Nandana Indananda, Suebsiri Taweepon

On February 15, 2011, four IP experts from Tilleke & Gibbins presented at the Intellectual Property for Spa & Wellness Industry Workshop hosted by the Thai Spa Association at the Imperial...

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April 7, 2011

Thailand IP Firm of the Year Awarded to Tilleke & Gibbins

On April 7, 2011, Tilleke & Gibbins was awarded Thailand IP Law Firm of the Year by Managing Intellectual Property at its Global Awards ceremony in London. This marks the fifth consecutive year...

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December 29, 2009

Application of Strict Liability to Intellectual Property Infringement

Nandana Indananda

The Doctrine of Strict Liability is the rule compelling a wrongdoer for legal responsibility for the damage incurred by an injured person without the need to prove the wrongdoer’s intention to cause...

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January 15, 2010

New Laws Bring Expanded Rights and Additional Obligations

Darani Vachanavuttivong, Nandana Indananda

Thailand’s IP laws have come under increased scrutiny as the country pushes to overcome its long-held reputation as a haven for counterfeiting and piracy. Efforts to transform this perception—and the...

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February 11, 2010

Fair Use: An Exploration of the Three-Step Test in Thai Copyright Law

Nandana Indananda, Suebsiri Taweepon

The legal concept of fair use in copyright law has been welcomed universally, as it serves to stimulate the dissemination of information and knowledge equitably and reasonably. With the social...

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April 9, 2010

Burden and Standard of Proof to Obtain Preliminary Injunction and Anton Piller Order in Patent Infringement Cases

Nandana Indananda

In Thailand, laws relating to the enforcement of patent rights mainly involve the Patent Act of 1979, as a substantive law, and the Act for the Establishment of and Procedure for the Intellectual...

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June 1, 2010

Your Guide to Effective Enforcement

Nandana Indananda, Suebsiri Taweepon

In the 15 years since Thailand became a member of the TRIPs Agreement, the country’s intellectual property laws have evolved significantly. A major evolution in the protection of IP rights in...

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