Nandana Indananda

Partner
Download vCard
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.

Date Titlesort icon
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...

Read more

November 4, 2015

Asia IP Patent Survey 2015: Tilleke & Gibbins’ Patent Practice Ranked “Tier 1” in Thailand

Tilleke & Gibbins has been named a “Tier 1” firm in Thailand for “Patent Prosecution” and “Patent Contentious” work in Asia IP’s most recent Patent Survey. The Patent Survey features patent news...

Read more

July 30, 2015

Asia IP Ranks Tilleke & Gibbins in “Tier 1” for Trademarks in Thailand

Tilleke & Gibbins has been ranked in “Tier 1” for “Trademark Prosecution” and “Trademark Contentious” work in Thailand by Asia IP  in the magazine’s Trademark Survey 2015. Only the leading...

Read more

June 7, 2016

Asia IP Trademark Survey 2016: Tilleke & Gibbins Receives Tier 1 Rankings in Four Countries

In Asia IP’s Trademark Survey 2016, Tilleke & Gibbins received “Tier 1” rankings across four countries: Cambodia Myanmar Thailand Vietnam The rankings table in Thailand and Vietnam was divided...

Read more

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:...

Read more

Date Titlesort icon
November 30, 2010

Fair Use: A Narrow Exception to Copyright Infringement in Thailand

Nandana Indananda, Suebsiri Taweepon

The original concept of copyright law is to protect the author from the unauthorized exploitation of his or her original work. To this end, the public at large may not be able to have access to or...

Read more

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...

Read more

November 8, 2010

Functionality Exception in Thai Patent Law

Nandana Indananda, Suebsiri Taweepon

Unlike design laws in many countries where the functional aspect of an article is clearly excluded from protection, Thai law does not contain any limitation in this respect. Although the protection...

Read more

December 29, 2014

Global Patent Litigation 2014 – Thailand Chapter

Nandana Indananda

The latest edition of Global Patent Litigation, Supplement 23, 2014, has been published by Kluwer Law. The book provides a comprehensive, multijurisdictional overview of the main features of patent...

Read more

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...

Read more